In June, eight Ocean Tomo intellectual property (IP) disputes economic damages experts were named to the IAM Patent 1000, the “definitive ‘go-to’ resource for those seeking to identify world-class, private practice patent expertise and leading expert witnesses.”
According to IAM, 96 economic damages experts representing 28 firms were among the IAM Patent 1000 this year. Eight of the 96 experts are part of the intellectual property practice of J.S. Held. Recognized based on “feedback from peers and clients” is Andrew W. Carter, Cate Elsten, Dan Lindsay, James E. Malackowski, Michael K. Milani, Todd Schoettelkotte, Bryan Van Uden, and Shirley Webster.
IAM’s extensive research process yielded numerous acknowledgments from clients and peers for members of the Ocean Tomo IP Disputes team, including:
“outstanding leadership skills which serve him well as a testifier”
“vast practical experience in and out of the courtroom”
“broad expertise that makes him much more than just a traditional consultant”
“extensive ITC experience”
“abundant experience testifying in complex litigation of many kinds”
“whether in the board room or on the stand, he is always impressive”
“maintained a dynamic patent practice as part of her broader financial analysis, consulting and expert testimony portfolio”
Andrew W. Carter, CPA, CLP, CFF, CGMA co-founded Ocean Tomo, a part of J.S. Held, and is a Senior Managing Director in the Intellectual Property Disputes Financial Expert Testimony practice. For almost three decades Mr. Carter has focused on intellectual property infringement damages, providing expert witness testimony more than 100 times. He is frequently called upon to testify in large scale or complex cases and was the damages expert for the largest patent damages awarded at trial in history ($2.5 billion). Mr. Carter has testified in both Federal and State courts, in the Federal Court of Canada, and in front of the International Trade Commission. His testimony in court covers some of the most popular patent infringement forums in the country, including ED Texas, Delaware, SD New York, ND California, New Jersey, WD Wisconsin, and MD Florida.
Cate M. Elsten, CMA, CLP, MAB is an accounting, marketing and finance professional. With over 35 years of professional experience, Ms. Elsten is the senior testifying and consulting expert in the west coast practice of Ocean Tomo, a part of J.S. Held. Ms. Elsten’s services to clients include business and intellectual property valuations, expert testimony in complex commercial litigation and strategic and operational consulting.
Prior to joining J.S. Held, Dan Lindsay was a Co-Founder and Managing Director of IPFC Corp. Dan has more than twenty years of professional experience providing financial consulting, damages analysis, and expert witness services to law firms and companies throughout the country involved in litigation and other disputes. Such matters have involved patent, trademark, trade dress, breach of contract, business interruption, antitrust, and oil and gas royalty issues, among others. Dan has extensive experience analyzing financial, licensing, marketing, business, and other relevant information for purposes of assessing and calculating damages in intellectual property disputes. He has consulted with law firms and corporate clients in all phases of intellectual property litigation, including early case damages assessment, discovery, motion practice, financial analysis, expert reports and analysis, depositions, and trial. Dan’s experience involves the quantification of damages in patent infringement and other intellectual property disputes, as well as assistance with the negotiation of patent license agreements outside the context of litigation. Dan has been designated and testified as an expert in federal court and has been recognized by Intellectual Asset Management as one of the leading economic experts in the field of intellectual property damages in the United States.
James E. Malackowski, CPA, CLP is a Co-founder and Senior Managing Director of Ocean Tomo, a part of J.S. Held. Mr. Malackowski has substantial experience as a Board Director for leading technology corporations and research organizations as well as companies with critical brand management issues. He is Past President of The Licensing Executives Society International, Inc., overseeing over ten thousand members in thirty-two countries. Mr. Malackowski focuses his non-for-profit efforts on organizations leveraging science and innovation for the benefit of children and students, including those located in lesser developed countries. He has served since 2002 as a Trustee or Director of the National Inventors Hall of Fame, Inc., an organization providing summer enrichment programs for more than 100,000 students annually. In 2022, Mr. Malackowski was inducted into the IP Hall of Fame and was recognized by the Academy with the Q. Todd Dickinson Award, which honors those who have made significant contributions to IP as a business asset. Mr. Malackowski’s inclusion into the IP Hall of Fame follows annual recognition since 2007 by leading industry publications as one of the ‘World’s Leading IP Strategists’. In 2011, Mr. Malackowski was selected by the World Economic Forum as one of less than 20 members of the Network of Global Agenda Councils to focus on questions of IP policy. On more than one hundred occasions, Mr. Malackowski has served as an expert in U.S. Federal Court, U.S. Bankruptcy Court, State Court, Court of Chancery, the Ontario Superior Court of Justice, the U.S. Patent and Trademark Office Patent Trial and Appeal Board, and global arbitrations on questions relating to IP economics.
Michael K. Milani, CLP has significant experience evaluating economic issues relating to intellectual property litigation. He combines 25 years of litigation experience with six years of corporate strategy work and his unique blend of experience is responsible for the innovative yet practical approaches he brings to his client engagements. As a testifying expert in Federal Court, State Court, Patent Trial and Appeals Board, and Alternative Dispute Resolution proceedings, Mr. Milani predominantly addresses issues relating to the quantification of damages, commercial success, and injunctive relief. Mr. Milani also has significant experience addressing economic considerations in connection with 337 investigations at the International Trade Commission. In connection with that work, Mr. Milani has offered testimony in several hearings relating to the issues of domestic industry, remedy, bond, public interest, and commercial success. Mr. Milani’s professional experience covers a wide range of industries including consumer products and electronics, medical equipment and devices, pharmaceuticals, semiconductors, LED, sporting goods, computer networking equipment, cellular technologies, avionics, retail security, industrial/building products, lighting products, automotive products, and flooring products, among others.
Prior to joining J.S. Held, Todd Schoettelkotte, CPA, CVA was the President, Managing Director of IPFC Corp. Todd has more than twenty years of experience as a financial consultant in a variety of litigation matters and disputes, including intellectual property, breach of contract, business interruption, valuation, and general damage assessments. Over the course of his career, he has significant experience assisting companies with complex financial accounting and litigation issues across many industries. Todd works with his clients on numerous complex studies involving valuations, lost sales, lost profits, incremental profits, reasonable royalty, unjust enrichment, product line profitability, fixed and variable cost analysis, manufacturing, and marketing capacity, cost claims, company financial performance, and interest on damages. He has extensive experience conducting complex studies of the company’s accounting records, assisted companies and law firms in identifying relevant financial information, developed damage claims, and assisted clients with the development of damage alternatives and related case strategies. Additionally, he assists in identifying, reviewing, and analyzing financial documents, including projections, forecasts, business plans, market studies, contracts, and license agreements. Over the course of his career, he has immense experience being designated and testifying as an expert in state and federal courts and in arbitration proceedings throughout the United States.
Prior to joining J.S. Held Bryan Van Uden was a Managing Director at IPFC Corp. Bryan has more than 20 years of experience in providing financial consulting expertise in valuations, dispute analysis, and strategies to improve business operations and profitability. His experience includes patent infringement, trademark infringement, copyright infringement, misappropriation of trade secrets, securities violations, veil piercing, breach of contract, personal injury, wrongful termination, unfair business practices, and business and intellectual property valuation. Bryan has assisted clients with complex studies involving technology licensing, lost sales, lost profits, capacity issues, incremental profits, fixed and variable cost analysis, product line profitability, price erosion, reasonable royalty determination, design around costs, unjust enrichment, corrective advertising costs and prejudgment interest. He has consulted with law firm and corporate clients in various phases of the litigation process, including: early case assessment; analyzing issues and developing damage strategies; preparing interrogatories and document requests; assisting in the preparation of affirmative and rebuttal expert reports; critiquing opposing expert reports and analyses; assisting in deposing fact, 30(b)(6) and expert witnesses; developing damages models and calculating damages; and developing demonstratives for trial. Bryan has also been designated and testified as an expert in state and federal courts and in arbitration proceedings throughout the United States, as well as internationally.
Shirley Webster, CBE is a Managing Director in the Intellectual Property Disputes Financial Expert Testimony practice of Ocean Tomo, a part of J.S. Held. Ms. Webster consults on intellectual property matters, providing analysis of economic damages, as well as expert testimony. These matters have included patent infringement, consideration of both reasonable royalties and lost profits, trade secret misappropriation, trademark infringement, gray market goods litigation, copyright litigation; valuation of intellectual property; and assistance in intellectual property licensing strategy. Ms. Webster also provides analyses in intellectual property matters before the ITC regarding domestic industry, exclusion orders and patent misuse. Her work in patent infringement damages matters has included both utility patents and design patents. She also provides financial analyses, consulting services and expert witness testimony on a variety of other types of litigation matters, including antitrust cases, breach of contract cases, product liability cases, fraud/misappropriations, franchisor/franchisee and distributor disputes, breach of fiduciary duty, ERISA, personal injury/wrongful death, termination, and dissident shareholder actions. Ms. Webster has also consulted and testified in bankruptcy and reorganization matters, including evaluating the business operations of a company out of compliance with loan requirements and testifying regarding the feasibility of proposed plans of reorganization.
Her experience includes consulting to both small firms and Fortune 500 companies in a variety of industries, including energy, chemicals, medical products, pharmaceuticals, telecommunications, consumer products, manufacturing, software, banks and financial institutions, and semiconductors.
You can request a full CV by emailing [email protected]. To learn more about our team of experts, visit: https://oceantomo.com/team/