Leslie M. Spencer
Leslie Spencer, co-chair of the firm's diversity committee, is a partner in the IP litigation practice. She works with clients on intellectual property matters involving software, networking, security, financial technology (“FinTech”) and other emerging technologies. She has over 15 years of experience litigating patent disputes in district courts, including through Markman hearing, trial and appeal to the U.S. Court of Appeals for the Federal Circuit. She is a registered patent attorney, and appears before the Patent Trial and Appeal Board. Leslie also counsels clients regarding IP asset protection, IP transactions and freedom-to-operate opinions.
Prior to practicing law, Leslie worked for financial services and e-commerce companies, and supervised the development of a smart card-based secure transaction system.
- Rovi Technologies Corporation – Defending Rovi/TiVo in connection with inter partes review challenging patents related to interactive television program guides.
- Yvolve Sports– Advising Yvolve Sports with regard to patent, copyright and trademark matters related to scooters and self-balancing vehicles.
- Aurelian IP Management, LLC v. Hewlett Packard Enterprise Co. (E.D. Tex.) – Defended Hewlett Packard Enterprise in a matter relating to the processing, storage and analysis of large sets of free-format data. Filed early motion to dismiss and resolved case favorably.
- Certain Digital Video Receivers and Hardware and Software Components Thereof, (USITC, 337-TA-1001) – Represented Rovi/TiVo adverse to Comcast in an investigation involving seven patents relating to interactive program guides and related technologies.
- Maxim Integrated Products v. Branch Banking & Trust Co. (W.D. Pa.; E.D.N.C.; E.D. Tex,) – Defending BB&T in multi-district litigation (MDL) involving integrated circuit and secure transaction patents asserted against mobile banking software. Also filed petition for Covered Business Method (CBM) review before Patent Trial and Appeal Board. MDL Panel transferred and centralized BB&T declaratory judgment action in Western District of Pennsylvania for pre-trial proceedings with district court cases involving additional defendants.
- Shortridge v. Automatic Data Processing, Inc. (N.D. Cal.) -- Defended ADP in patent infringement action related to labor data management. Patent invalidated for unpatentable subject matter under Alice decision.
- Presqriber, LLC v. ADP AdvancedMD, Inc. (E.D. Tex.) – Defended ADP subsidiary, ADP AdvancedMD, in multi-defendant litigation brought by non-practicing entity (NPE) asserting electronic prescribing patents.
- Verified Hiring, LLC v. ADP, LLC (E.D. Tex.) – Defended ADP in NPE litigation involving employment data verification and matchmaking patents.
- Wellogix Tech. Licensing LLC v. Automatic Data Processing, Inc. (E.D. Tex.; S.D. Tex.) – Defended ADP in related infringement actions asserting patents directed to electronic accounting and procurement methods. Obtained summary judgment of non-infringement in S.D.Tex. declaratory judgment action filed on behalf of ADP. Also obtained stay and dismissal of related E.D.Tex. action in view of inter partes reexamination and non-infringement judgment in S.D.Tex. case.
- Athenahealth, Inc. v. AdvancedMD Software, Inc. (D. Mass.) -- Defended ADP AdvancedMD subsidiary in patent infringement litigation related to healthcare information technology and medical claim processing. Resolved case with favorable settlement.
- Progressive Insurance v. Hartford Fire Insurance Company (N.D. Ohio) – Defended major insurance company against assertions of infringement involving patents related to insurance underwriting based on vehicle operating data (“telematics”). Obtained stay pending Covered Business Method (CBM) review before Patent Trial and Appeal Board.
- Motorola Mobility v. Microsoft Corporation (W.D. Wash.) – Represented Motorola Mobility in patent infringement litigation against Microsoft Corporation involving seven Motorola Mobility patents covering various technologies including computer graphics application programming interfaces (APIs), instant messaging and mobile application updates.
- Wildcat Intellectual Property Holdings, LLC v. The Topps Company (E.D. Tex.) – Represented The Topps Company in a multi-defendant NPE patent litigation involving systems and methods related to an electronic trading card.
- Quark Images LLC v. The Topps Company (E.D. Tex.) – Represented The Topps Company in a multi-defendant litigation involving patents directed to creating and ordering customized branded merchandise over a computer network.
- Triple Point Technology v. Sapient Corp. (Del. Ch. Ct.): Represented Sapient in a trade secret case concerning automated trading software systems.
- Prism Tech. LLC v. A Major U.S. Pharmaceutical Company (D. Del.) – Represented a major U.S. pharmaceutical company in multi-defendant NPE litigation involving patent related to network security, user and server authentication methods.
- Co-author, “Defensive Patenting Strategies for Blockchain Innovators,” Law360 (October 10, 2017)
- Co-author, “Supreme Court’s TC Heartland Decision Will Move Venue Out of E.D. Texas,” IP Litigator (July-August 2017)
- Quoted, “Proposed Laws Could Hurt Financial Industry in Patent Fights,” Bloomberg BNA’s Patent Trademark & Copyright Journal (July 20, 2017)
- Quoted, “5 Tips for Minority Women on Their Path to Partnership,” Diversity & The Bar (Spring 2017)
- Quoted, “Overview: Meet the GCs Who May Finally Move the Needle on Diversity,” The American Lawyer (May 24, 2017)
- Quoted, “Gilstrap Moves Over for America’s Next Top Patent Judge,” Law360 (June 1, 2017)
- Quoted, “Troll Patent Lawsuits Seen Declining in Wake of Supreme Court Ruling,” Business Insurance (May 30, 2017)
- Profiled, “Top Women in the Law 2016: Leslie Spencer,” New York Law Journal (November 14, 2016)
- Featured, “Attorneys at the Top: Leslie M. Spencer,” The Network Journal (October 2015)
- Quoted, “Lawyers Weigh In On Obama 'Patent Troll' Initiatives,” Law360 (June 5, 2013)
- Co-author, “Considerations For Early Transfers In Multidefendant Cases,” Law360 (January 17, 2013)
- “Applying the Entire Market Value Rule After Lucent,” 2010 IPO Articles & Reps., Pats. Sec. No. 7, March 18, 2010
- “Through the Looking Glass: Litigating Software and Business Method Patents Under Section 112,” 2009 IPO Articles & Reps., Pats. Sec. No. 9, June 1, 2009 (co-authored with George N. Chaclas, Patrick A. Lujin, Binal J. Patel, and Michael D Stein)
- “Bilski: The Federal Circuit’s Opportunity to Clarify State Street and the Patentability of Business Methods,” IP Litigator, Vol. 14, No. 4, July/August 2008, Aspen Publishers
- Speaker, “Evolving Robo Advisor Compliance Programs,” SIFMA’s Compliance & Legal Society Annual Seminar (March 20, 2017)
- Speaker, “10 Defensive Strategies All High-Tech Companies Need to Know,” LOT Network Bridge All Members Meeting (May 11, 2017)
- Speaker, Managing IP International Women’s Leadership Forum, “PTAB Trials: Tips and Strategies for Practitioners” (November 29, 2016)
- Speaker, 13th Annual Patents for Financial Services Summit (July 21-22, 2016)
- Speaker, Managing Intellectual Property International Women’s Leadership Forum, “Protecting Computer-Related Inventions in the Aftermath of Alice” (June 9, 2016)
- Host and Speaker, Ropes & Gray IP Master Class Financial Services Patent Litigation Roundtable, “Post-Alice: Getting and Enforcing FinTech Patents” (April 28, 2016)
- Speaker, Ropes & Gray NY CLE Ethics Series, “Ethics and FinTech Innovation: How the Tech-Driven World is Disrupting the Traditional Financial Services Landscape” (October 14, 2015)
- Speaker, 12th Annual Patents for Financial Services Summit, “Impact of Mobile Patents on Banking, Insurance, and Wall Street” (July 22, 2015)
- Speaker, Ropes & Gray IP Master Class Financial Services Roundtable, “What’s Up With Patent Reform” Q & A with Congressman Hakeem Jeffries (April 21, 2015)
- Speaker, Ropes & Gray IP Master Class Financial Services Roundtable, “Section 101: Post-Alice” (April 21, 2015)
- Host and Speaker, Ropes & Gray SoftPat Roundtable, “Is Patent Litigation Killing Software Innovation?” (November 5, 2014)
- Speaker, 11th Annual Patents for Financial Services Summit, “Intellectual Ventures and Its Impact on Patent Protection” (July 23, 2014)
- Speaker, Ropes & Gray IP Master Class Financial Services Roundtable, “Reshaping the World of Post-Grant Challenges: The PTAB Year (and-a-Half) in Review” (April 7, 2014)
- Panel Presenter, “Transfers and Multi-District Litigation,” Second Annual Institute for Advanced Corporate Counsel (iACC 2.0) (May, 10, 2013)
- Panel Presenter, “The Future of Business Method Patents,” Practicing Law Institute, 2nd Annual Patent Law Institute (January 14-15, 2008)