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Vice President Management

Location:
7932
Posted:
March 29, 2010

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Resume:

MARY ANN G. LEMERE

[pic]

* ******** ***, ******* ****, NJ 07932

Home: 973-***-****

Cell: 732-***-****

EDUCATION

Seton Hall University School of Law

Juris Doctor, cum laude, 1986

University of Rochester

Bachelor of Science, Geomechanical Engineering, 1983

EMPLOYMENT

October, 2008 to Present

Frommer Lawrence & Haug, 745 Fifth Avenue, New York, NY

Partner

Lead Licensing and Transactions Practice Group; Manage litigation team in

pharmaceutical patent infringement litigation seeking $100M + in damages,

asserting 7 patents; Represent tech start up company in licensing dispute

against major state university; lead firm's marketing function, including

budgeting, placing ads, direct marketing efforts, events and cross

marketing to existing clients. Opened London office and manage professional

there in workload and business development efforts. Oversee patent and

trademark application dockets for pharmaceutical and cosmetic clients.

September 2001 to June 2008

Trane Inc. (formerly American Standard Companies), Piscataway, NJ

Vice President and Associate General Counsel, Bath and Kitchen

Led the legal function worldwide for $2.5 billion Bath and Kitchen

business, supporting manufacturing, sales and distribution in 23 countries;

Participated on worldwide leadership team, working to align strategies and

processes of regions, reduce costs, simplify the business, and upgrade

talent and product offerings.

. Teamed with outside counsel and bankers to sell the worldwide bath and

kitchen business through auction process during 2007-2008, to achieve

sale price at high end of predicted value

. Prior to sale of business, built worldwide legal function hiring

lawyers in Europe, China and US to support all legal aspects of

business in coordinated fashion, with a matrix reporting structure

. Led response to multinational dawn raid by European Commission

alleging sharing of pricing information and price fixing; Responded to

subsequent DOJ subpoena in the US and successfully closed

investigation with no action by DOJ

. Obtained dismissal on the pleadings of class action case in US

District Court alleging antitrust violations related to European

Commission cartel investigation

. Managed disclosure, and certain governance matters for Chinese joint

venture company traded on Hong Kong stock exchange

. Bankrupted and delisted struggling Philippine manufacturing and

distribution business listed on Philippine stock exchange to stem

losses of $2.0+M per year

September 2001 to June 2008

Vice President and Chief Legal Officer, Intellectual Property and Licensing

Led the intellectual property function across all of American Standard's

worldwide businesses divisions (kitchen & bath, air conditioning, truck

brakes). Developed licensing programs, competitive intelligence programs,

and upgraded talent and systems.

. Built trademark licensing program for consumer products businesses to

generate $1+ royalty income per year

. Collaborated with multi-functional team to create tax advantaged

European business structure across all business units, including

assigning IP assets, and designing and implementing intercompany

licensing structure to reduce tax rate by three points

. Implemented competitive intelligence program and guidelines in multi-

billion dollar business to assist business with outward focus in a

compliant format

. Designed architecture for separating and selling worldwide IP

portfolio assets, to facilitate sale or spin of various business units

of American Standard Companies

August, 1997 to August 2001

Honeywell International Inc. (formerly AlliedSignal Inc.), Morristown, NJ

Chief Intellectual Property Counsel (June, 2000 to August 2001)

Responsible for day to day management of teams of legal professionals in

intellectual property law and licensing functions for polymers, chemicals,

electronic materials and automotive products business units. Focused on

strategic control over technologies and revenue generation through

licensing and enforcement.

. Successfully enjoined former business unit leader from stealing trade

secrets, customers, and joining competing company in electronics

material field

. Reorganized IP function to meet the need of newly merged company

structure

Chief Trademark Counsel (August, 1997- August 2001)

Responsible for managing, growing and protecting worldwide trademark

portfolio of Honeywell in all of its diversified industrial and consumer

markets. Activities included clearance, filing, maintaining, licensing and

enforcing trademark rights worldwide, battling grey market and counterfeit

goods, and counseling on competitive and aggressive advertising issues,

copyright matters and protection of brands and domain names on the

internet.

. Drafted and negotiated trademark license agreements generating $2M +

per year

. Managed corporate name and identity change upon merger of AlliedSignal

and Honeywell, and integrated Honeywell trademark assets into existing

AlliedSignal trademark function

E-Commerce Counsel (December, 1999-August, 2000)

Responsible for legal review and counseling of all matters relating to

conducting business on the internet. Negotiated and drafted software

licenses, web hosting and technical assistance agreements. Led enforcement

efforts relating to domain name disputes, metatags, and unauthorized use or

posting of information on the internet. Drafted and negotiated multi-party

joint venture B2B e-business portal in aerospace sector.

June, 1992 to July, 1997

BASF Corporation, Mt. Olive, NJ

Senior Counsel, Intellectual Property

Responsible for management of all intellectual property litigation and

licensing for North American subsidiary of German chemical conglomerate

engaged in the manufacture and distribution of pharmaceuticals,

human/animal nutrition, specialty chemicals, polymers, coatings/colorants

and agricultural products. Negotiated and advised on licensing and

transactional agreements, joint development arrangements, acquisitions,

divestitures, risk avoidance, and protection of confidential information.

September, 1988 to June, 1992:

Curtis, Morris & Safford, P.C., New York, NY

Associate Attorney

Intellectual property litigation, client counseling, licensing, and appeals

in the federal courts. Acted as lead counsel on number of cases, including

oral argument at the Court of Appeals for the Federal Circuit.

September, 1986 to August, 1988

Lupo, Lipman & Lever, P.C., Washington, DC

Associate Attorney

Engaged in intellectual property litigation in the federal courts and

International Trade Commission and counseling in all aspects of

intellectual property

BAR ADMISSION

New Jersey, admitted December 1986

New York, admitted January 1987

U.S. Patent and Trademark Office, 1986

Court of Appeals for the Federal Circuit 1988

PROFESSIONAL ORGANIZATIONS and SPEAKING ENGAGEMENTS

American Bar Association, Patent, Trademark and Copyright Section

American Intellectual Property Law Association (AIPLA)

International Trademark Association (INTA)

Speaker and panelist Intellectual Property Litigation, the In-House View,

Practicing Law Institute (PLI) 2000-2003.

Speaker and panelist, Patent Litigation, The Sedona Conference, October

2005

Speaker and panelist, Managing Litigation, New Jersey Corporate Counsel

Association, 2006

Speaker and panelist, Enterprise Risk Management for the General Counsel,

Brand Risk Management, Incisive Media Events, 2008



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