MARY ANN G. LEMERE
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* ******** ***, ******* ****, 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