DATE & TIME
Wednesday, April 22, 2015
8:00 a.m. to 5:30 p.m. (Breakfast 7:00 – 8:00 AM)
Networking dinner at Texas de Brazil, April 21 - 7:00 p.m. to 9:00 p.m.
822 Town and Country Boulevard
Houston, Texas 77024
201 Helios Way
Houston, TX 77079
PROGRAM FORMAT AND TOPICS
The CEEM Sector meeting focuses on issues related to members of the CEEM Sector as well as other sectors. The event explores topics relevant to the CEEM Sector through panel and small, facilitated group discussions, where the focus is on peer-to-peer interactions, thought-provoking engagement and valuable take-aways to implement and integrate immediately into your organization. Four interactive presentations followed by workshops will be conducted at the conference on the topics listed below:
Care and Feeding of Licensing Agreements – Panel will discuss living with the deal after it is signed and will cover such aspects as important technology transfer terms, considerations in transfer and on-going support, intellectual property grant backs, royalties and how they may be impacted as the agreement ages as well as audit terms and implementation.
Tim Kinn, Intellectual Property and Licensing Associate, ExxonMobil Upstream Research Company
John Somich, Upstream Technology Commercialization Manager, BP
Bob Payne, President, IP Licensing Advisors, LLC
Bruce Orr, Director, Business Advisory Services at Grant Thornton LLP
Cultural Challenges in Licensing Deals - These experienced presenters will discuss some of the cultural challenges in setting up and executing deals. Each presenter will share some of their observations and “clever tactics” in negotiation. Topics include: preparation for the meetings, dos and don’ts in various cultures and keys to building trust..
Les Goff, COO, KDL Solutions, LLC
Raul Montes, Intellectual Property and Licensing Manager, ExxonMobil Upstream Research Company
Robert Somich, Technology Director, Braskem
Gary Haag, CLP, JD, PhD, PE, IP Contracts Consultant, formerly Contracts Consultant LNG Technology and Licensing, ConocoPhillips
Catalysts - How Catalyst Technology Companies Protect their Intellectual Property While Providing Their Catalysts to Customers – Panel will focus on balancing licensing deals with intellectual property concerns for both catalyst licensors and licensees. Such concerns include grant backs, catalyst regeneration, and intellectual property disclosures, especially for methods of preparing catalysts. The panelists will focus on important clauses to include in license agreements, as well as considerations when initially obtaining intellectual property coverage with an eye toward licensing.
Nicki Kennedy, Associate, Kilpatrick, Townsend & Stockton LLP
Justin Krieger, Partner, Kilpatrick Townsend & Stockton, LLP
Alex Tang, Licensing and Commercialization Manger, Gas Technology Institute
Jaimes Sher, Chief Intellectual Property Counsel, Celanese International Corporation
Mal Kaus, Independent Consultant, formerly ExxonMobil Upstream Research Company Intellectual Property and Licensing Manager
The Cloud and Confidentiality – Panel will discuss key agreement terms and other considerations important in maintaining confidentiality while sharing information in the cloud environment and using cloud-based resources.
John Gilmore, Director of Upstream Oil & Gas Process Automation, Schneider Electric
Ronald Chichester, Attorney, Ronald Chichester, P.C.
Kenji Seto, Sr. Director, SimSci Software Development, Schneider Electric Software – Global Solutions
Jeff Andrews, Partner, Bracewell & Giuliani LLP
Who Should Attend
LES members and non-members interested in exploring topics relevant to the CEEM sector and those who wish to network with individuals actively engaged in IP topics in the CEEM industry and associated service organizations
Texas CLE credit approved for 6.0 hours (including 0.25 hours of ethics)
$495 Members & Non-Members
$50 Members & Non-Members
Conveniently located hotels:
Sorella Hotel – Houston
800 Sorella Court, Houston, TX 77024
Omni Houston Hotel at Westside
13210 Katy Freeway
Houston, Texas 77079
The Westin Houston, Memorial City
945 Gessner Road
Houston, Texas, 77024
Jeffery B. Andrews is a Partner with Bracewell & Giuliani LLP and focuses his transactional practice on outsourcing as well as technology and electronic commerce transactions.
Jeff is consistently involved in ground-breaking information technology and business process outsourcing transactions. He has represented national and international firms, across a broad range of industries, in virtually all types of outsourcings, and has dealt with every major multinational and Indian outsourcing service provider. Jeff also has extensive experience in structuring and negotiating technology transactions and electronic commerce transactions, having represented both buyers and providers of technology goods and services in hundreds of transactions. Over the last fifteen years, Jeff has acted on outsourcing and technology transactions involving over $25 billion in the aggregate.
Jeff is ranked by Chambers USA and Chambers Global, recognized in The Legal 500 US, and included in The Best Lawyers in America as one of the leading outsourcing and technology attorneys. For 2014 he was named “Technology Lawyer of the Year” in Houston by The Best Lawyers in America. Jeff is a 1994 graduate of Trinity University and a 1997 graduate of the University of Texas School of Law.
Ronald L. Chichester, Esq.
- Juris Doctorate, University of Houston Law Center, 1991
- Emphasis on Intellectual Property and Computer Law
- Masters of Science - Aerospace Engineering, University of Michigan, 1984
- Concentration in Fluid Mechanics, minor in Structural Mechanics and Computer Modeling
- Bachelors of Science - Aerospace Engineering, University of Michigan, 1982
Admissions, Qualifications and Bar Activities:
- Member of the State Bar of Texas.
- Admitted to Practice before the U.S. Patent and Trademark Office.
- Admitted to Practice before the U.S. Court of Appeals for the Federal Circuit.
- Admitted to Practice before the U.S. District Court - Southern District of Texas.
- Admitted to Practice before the U.S. District Court - District of Nebraska.
- Certified Computer Forensic Examiner.
- Immediate Past Chair of the Computer and Technology Section of the Texas Bar.
- Vice-Chairman of the E-Commerce Committee of the Business Law Section of the Texas Bar.
- Adjunct Professor of Law, University of Houston (2006-Present)
- Teaching Digital Transactions.
- Adjunct Professor of Law, South Texas College of Law (2000-2004)
- Teaching the course entitled "Computer & Internet Law."
Previous Legal Experience:
- AccessData Corporation (Assistant General Counsel)
- Baker Botts LLP (Associate)
- Frohwitter (a Munich-based IP boutique firm of which the Houston Office merged with Baker Botts)
- Cooper Industries, Inc. (Counsel, Patents and Trademarks)
Gary Haag recently retired from ConocoPhillips Company where he was a Contracts Consultant in the LNG Technology and Licensing Group and prior to that, a Senior Counsel in the Intellectual Property group in ConocoPhillips Legal department, having joined Phillips Petroleum Company (now ConocoPhillips) in 1991. He has been actively involved in the out-licensing of ConocoPhillips proprietary technology for natural gas liquefaction, that being Optimized Cascade Process®, for the past twenty plus years. During such time, he also performed patent prep and prosecution in support of ConocoPhillips upstream, refining and natural gas liquefaction technologies, transactional support in relation to such technologies, most notably the out-licensing of ConocoPhillips technologies, and litigation support. Mr. (“Doc”) Haag has BS (Nebraska), MS (Iowa State), and PhD (Tennessee) degrees in chemical engineering and a JD in law (Tulsa). Prior to joining ConocoPhillips, he was a research engineer for 9 years at Amoco Production Company where he worked on tertiary oil recovery techniques, including the operation of a CT scanner laboratory for studying fluid flow in rock. Prior to that, he was a research engineer for 6 years at Oak Ridge National Laboratory where he worked on off-gas treatment technologies for nuclear facilities. He is licensed to practice law in Oklahoma and Texas and before the US PTO, a registered professional engineer in Tennessee and Oklahoma, and a Certified Licensing Professional.
Malcolm (Mal) J. Kaus retired from ExxonMobil as Upstream Intellectual Property Process and Licensing Manager had responsibility for all ExxonMobil Upstream Research Company’s work processes and procedures for the acquisition, maintenance, assertion and defense of its Intellectual Property. As Licensing Manager, Dr. Kaus had responsibility for all licensing transactions impacting ExxonMobil’s Upstream business. He was also responsible for Intellectual Property aspects of Commercial Agreements, Joint Developments and Joint Industry Programs, as well as dispute resolution and enforcement issues.
Prior to this assignment, Mal Kaus was Intellectual Property Process and Global Polymers Licensing Manager, with responsibility for all ExxonMobil Chemical's work processes and procedures for the acquisition, maintenance, assertion and defense of its Intellectual Property. As Global Polymers Licensing Manager, Dr. Kaus was responsible for all licensing transactions (in/out) impacting ExxonMobil's global polymers businesses including polyethylene, polypropylene, specialty ethylene elastomers, butyl rubber and adhesives strategic business units. ExxonMobil Chemical is a premier licensor of high pressure Low Density Polyethylene technology with operations or licensees in over eight countries and ten locations. ExxonMobil Chemical also licenses its Polypropylene technology.
Previously Dr. Kaus was Global PE Products Technology Manager, with responsibility for ExxonMobil's product development and customer technology support for its worldwide PE business. This includes LLDPE, HDPE, LDPE, EVA, EAA IOTEK Ionomers, EXCOR EAA's, EMA and a variety of other specialty copolymers. Technology support is provided from ExxonMobil's Technology Centers located in the United States (Baytown and Baton Rouge), Canada (Sarnia) and Belgium (Machelen) and Singapore.
Prior to this assignment Dr. Kaus was responsible for Exxon Chemical's intellectual property litigation in the metallocene catalyst area. Partially overlapping the above assignment, he was also Polypropylene Marketing Manager from 1996 until December 1998, with responsibility for market strategy, pricing, supply/demand planning and financial analysis for Exxon Chemical’s North American Polypropylene business.
Previously, he was worldwide EXXPOL® Venture Manager, and had responsibilities for three areas: EXXPOL Ethylene Polymers (Exact® Plastomers); EXXPOL Propylene Polymers (Achieve™); and EXXPOL catalyst manufacturing. He was appointed to this position in 1991. He was responsible for all activities related to the manufacturing, product development, sales and marketing of Exact Plastomer products; and for commercial supply of all EXXPOL catalysts and raw materials, as well as catalysts for licensee use.
Preceding his assignment as worldwide EXXPOL Venture Manager, Dr. Kaus was Exxon’s Chemical’s worldwide ESCOR® / IOTEK® Venture Manager from 1988 until 1991 and was located in Antwerp, Belgium.
Kaus joined Exxon Chemical Company in 1980 in Baytown, Texas as a Senior Research Chemist working in the Polyolefin Catalyst Development group. In 1982 he was named Department Head of the Polyolefin Catalyst Development group, and in 1985, he was named Department Head of North American Polyethylene product development and technical service. Prior to joining Exxon Chemical Company, Kaus held R&D management positions at Dart Industries and Stauffer Chemical Company. During this time he also held the position of Adjunct Assistant Professor of Chemistry at Pace University (New York).
He is a summa cum laude graduate of Washington and Jefferson College with honors in Chemistry and a member of Phi Beta Kappa and Who’s Who in American Colleges and Universities. Dr. Kaus earned his Doctorate in Chemistry from Brown University in 1976. He also holds a Masters of Business Administration degree from the University of Houston. He is the inventor of a number of patents in the areas of polyolefin catalysis and polypropylene. Dr. Kaus is also a Certified Licensing Professional (CLP™) and is currently serving a two-year term on the CLP Board of Governors.
Nicki Kennedy is a registered patent attorney who concentrates her practice on patent-related matters with a focus on client counseling, patent prosecution, domestic and international patent portfolio development and management, and post grant proceedings. Additionally, Ms. Kennedy’s practice includes invalidity, patentability, non-infringement, and freedom-to operate opinions.
Prior to joining the firm, Ms. Kennedy worked as an associate in a boutique intellectual property law firm in Northern Virginia, where she also focused on patent law. Previously, Ms. Kennedy was a patent examiner at the U.S. Patent and Trademark Office where she examined patent applications in the organic chemistry field, including polymer, pharmaceutical, transdermal and cosmetic patent applications.
Prior to her experience at the U.S. Patent and Trademark Office, Ms. Kennedy was an associate at a boutique law firm where she focused on import and export law, particularly under the Export Administration Regulations. She also gained technical experience working in a small pharmaceutical research lab.
She graduated from Randolph Macon College in Ashland, Virginia with a bachelor’s degree in Chemistry and from the Columbus School of Law at the Catholic University of America with a J.D. and a certificate from the Comparative and International Law Institute.
Timothy F. Kinn has over 24 years of experience in the Petroleum Refining and Petrochemical industries; he holds a B.S. degree in Chemical Engineering from the University of California at Berkeley and a Masters Degree in Business Administration from Rutgers University. He joined Mobil Chemical Company in 1990 as a process engineer in their olefins and aromatics facility in Beaumont, Texas and served in several olefins-related engineering and production positions. He later transferred to aromatics technology where he worked on the development and commercialization of several of ExxonMobil's aromatics processes and is an inventor on 11 patents. During this period he also held a position as Paraxylene Marketing Manager for the Americas followed by several engineering positions, both in the US and in the Middle East. Tim was the ExxonMobil Chemical Company Aromatics Technology licensing manager for the Middle East and Asia from 2004 – 2008 and then joined ExxonMobil Upstream Research Company in the role of Intellectual Property and Licensing Associate supporting the company’s engineering research activities. In this role, Tim is responsible for assisting in development of research agreements, including Joint Industry Projects, Joint Development Agreements, and licensing of technology both in and out.
Justin Krieger is a registered patent attorney who focuses on client counseling, district court and patent office litigation, and patent prosecution. Mr. Krieger’s technical focus includes chemistry, chemical engineering, medical devices, metallurgy, nanotechnology, mechanical engineering, consumer products, business methods, and software technology. He has experience prosecuting domestic and international patent applications including reexamination and reissue applications. He also actively prepares non-infringement and validity opinions including comprehensive freedom-to-operate (FTO) analyses in the chemical, polymer, medical device, and mechanical arts from both due diligence and litigation perspectives. Mr. Krieger is also involved in various trademark matters, including trademark prosecution, oppositions and negotiating co-existence agreements.
Mr. Krieger has been actively involved in numerous patent litigation matters and has participated in all phases of discovery, trial, and appeals. He is also experienced in litigation before the US Patent & Trademark Office including Interference and Inter Partes Review proceedings, as well as Section 337 investigations before the US International Trade Commission (ITC).
Prior to joining the firm, Mr. Krieger worked as a shareholder in the northern Virginia office of an IP boutique firm where his areas of practice included patents, trademarks and client counseling. Previously, Mr. Krieger was a partner in the Washington, D.C. office of an international law firm where he participated in numerous patent lawsuits before district courts and the U.S. International Trade Commission.
Mr. Krieger graduated from the College of William and Mary with a bachelor’s degree in chemistry and with a J.D. from the University of Florida College of Law. While attending law school, Mr. Krieger was a member of the Florida Law Review.
Raul R. Montes is Manager, Intellectual Property and Licensing, ExxonMobil Upstream Research Company in Houston, Texas. Prior to his current assignment, Mr. Montes was General Counsel, Univation Technologies, LLC, the leading technology licensor to the worldwide PE industry and an affiliated joint venture of ExxonMobil Chemical Company and The Dow Chemical Company. Mr. Montes has worked for ExxonMobil for approximately 30 years in various other roles as well, including Associate Chief Attorney of Exxon Exploration Company. He holds a B. S. in Chemical Engineering and a Doctor of Jurisprudence (both from the University of Houston).
Bruce Orr is a Director in the Grant Thornton Houston Business Advisory Services practice. Bruce is driven to discover what is hidden and brings a unique, outside of the box style of analytical and consulting skills to deliver substantial value to his clients. He is a governance, risk, and compliance product service lead in the Houston market and for the overall Energy and Mining GT service practice with over 18 years experience.
His clients appreciate his outstanding track record in identifying and evaluating internal controls, corporate governance, forensic investigation issues, royalty, fraud assessment, cost allocation, licensing and intellectual property protection, contract and contractor issues, procurement, construction, Foreign Corrupt Practices Act compliance reviews and anti-corruption/anti-bribery investigations and accounting related issues for his clients.
Bruce has helped solve numerous highly complex issues for his clients. Through his unique abilities and approach, he has identified, recovered, and resolved millions of dollars of un-reported royalties, revenue leakage, overbillings, waste, and abusive spend from third party business partners and vendors for his clients. He is passionate about bringing transparency and ensuring value out of his client’s business partner relationships.
Bruce holds a B.A. in Accounting from Southwestern University. He spends his free time with his wife and three children. He is an adventurer and enjoys scuba diving in some of the amazing oceans and lakes around the world.
Specialties: Compliance examinations, fraud investigations, internal audit, cost redution, contract disputes, process reviews, construction audits, royalty reviews
Bob Payne is the founder and president of IP Licensing Advisors, LLC. He founded the company in 2004. The company provides a range of intellectual asset and technology licensing business development advisory services to the oil and gas and chemical industries. The company’s client base includes integrated oil and gas and global chemical, engineering and consulting companies.
Bob’s work history includes 30 years working in the petrochemicals industry, 20 years of which he worked in licensing petrochemical process technologies and catalysts worldwide. Bob began his career working for BF Goodrich (BFG) at its world scale petrochemical facility in Kentucky. He participated in or led plant design and operational reviews and licensee plant startup activities at world scale petrochemical plants in seven countries. He later served as the monomer technology licensing and catalyst products business manager for BFG and subsequently became director of licensing for Oxy Vinyls, LP.
At Oxy Vinyls, LP, Bob was responsible for the worldwide licensing of its monomer and polymer process technologies and management of its clean-reactor coatings and monomer catalysts businesses. In his role as director of licensing, Bob held overall responsibility for all of Oxy Vinyls, LP’s licensing business activities including license, basic engineering and catalyst supply agreement negotiations.
Bob is co-chair of the chemicals, energy, environmental and materials sector committee of the Licensing Executives Society (LES) (USA and Canada, Inc.) for 2014/15 and he served as chair of the committee in 2009/10 and 2005/06. He was the LES Houston chapter education chair from 2009 through 2011. He holds a B.S. in chemical engineering from the University of Kentucky and is a Certified Licensing Professional having satisfied the requirements of the CLP qualifications.
Kenji Seto has more than 20 years of experience defining, developing and leading technical software development primarily focused on the Oil and Gas industry. He leads a team of 140 people worldwide and is responsible for SimSci’s flagship products (PRO/II, DYNSIM, ROMeo) as well as their next generation counterparts.
Since 1995, Mr. Seto has been working with this product line and moved with it though seven mergers and acquisitions. He started as a developer and rose through the ranks of development lead, manager and director over this time. Cybersecurity is a top priority within Schneider Electric Software, as many of our applications are online in refineries and chemical plants (i.e., directly manipulating the processes). To this end, we have adopted Microsoft’s SDL (Security Development Lifecycle) as well as best practices for our cloud applications.
He received his BS from Wake Forest University and Ph.D. from Texas A&M University. Mr. Seto resides in Houston, TX.
Jaimes Sher is the Associate General Counsel and Chief Intellectual Property Counsel at Celanese, a global technology and specialty materials company that engineers and manufactures highly-diversified products serving a broad range of end-use applications, including paints and coatings, textiles, automotive applications, consumer and medical applications, performance industrial applications, filter media, paper and packaging, chemical additives, construction, consumer and industrial adhesives, and food and beverage applications, since 2009. Mr. Sher is a registered patent attorney with over 20 years of IP experience. He leads a team of IP lawyers in the U.S. and Germany who handle all IP matters for Celanese’s six global businesses.
Previously, Mr. Sher worked for Exxon Mobil Corporation from 1991-2004 as Counsel; Cabot Corporation from 2004-2007 as Senior Counsel; and Chief Intellectual Property Counsel for Chemtura Corporation from 2007-2009. He graduated from The University of Texas at Austin with a bachelor’s in biology and chemistry in 1985, St. Mary’s School of Law with a JD in 1989, and The John Marshall Law School with a LLM in IP in 1991.
Alex Tang is currently the Licensing and Commercialization Manager at the Gas Technology Institute (GTI). He is responsible for all commercialization activities at GTI and leads the negotiation and structuring pathways for energy technology to go from the laboratory environment to commercial practice whether it is through licensing, establishing Joint Ventures, or creating spin-out opportunities. Mr. Tang brings entrepreneurial experience as a Co-Founder of Invention Bridge (IB) where IB assisted leading Midwest Universities with commercialization activities, managed a Department of Energy EIR Grant at Argonne National Laboratory, and helped launch the Clean Energy Trust, a clean energy non-profit accelerator founded by Nick Pritzker and Michael Polsky. Mr. Tang was also a Mentor In Residence at SURGE Accelerator as well as brings private equity experience from McNally Capital and MVC Capital. Prior to attending business school at the University of Chicago Booth School of Business, he was a Senior Manager at Stax Inc., where he led commercial due diligence engagements for the leading middle market and mega-fund private equity firms seeking investments in the US, Europe, and China. Mr. Tang started his career at Open Prairie Ventures, an early stage venture capital firm investing in start-ups utilizing university based research where he structured, negotiated, and closed investments in 9 companies where significant exits of companies recommended for investment include: Infoblox (NASDAQ: BLOX, IPO 4/12), TomoTherapy (NASDAQ: TOMO, IPO 5/07), Telemics (acquired by Tyco Corporation, 7/06), Intersymbol Technologies (acquired by Kodeos Communication 3/06), iNest (acquired by LendingTree.com, 11/04). Mr. Tang has a BS and MS in Mechanical Engineering from the University of Illinois at Urbana-Champaign.