Leslie M. Spencer

Partner

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  • LLM (Trial Advocacy), Temple University Beasley School of Law, 2006
  • JD, New York University School of Law, 1998
  • MBA, Stephen M. Ross School of Business at the University of Michigan, 1988
  • BS (Computer Science and Engineering), Massachusetts Institute of Technology, 1985

Qualifications

  • New York, 2001
  • U.S. Patent and Trademark Office

Court Admissions

  • Supreme Court of the United States, 2018
  • U.S. Court of Appeals for the Federal Circuit, 2004
  • U.S. District Court for the Eastern District of Wisconsin, 2006
  • U.S. District Court for the Eastern District of New York, 2001
  • U.S. District Court for the Southern District of New York, 2001
  • Honorable William C. Conner Inn of Court
  • American Intellectual Property Law Association
  • New York Intellectual Property Law Association, Patent Litigation Committee co-chair
  • Financial Times Innovative Lawyers (2018) – Honored for developing a blockchain-transferable software license.
  • New York Law Journal “Top Women in Law” (2016)
  • New York Metro Super Lawyers (2013-2019)
  • New York Times Magazine “Top Women Attorneys in the New York Metro Area” (2014)
  • New York Metro Super Lawyers - Rising Stars (2011)

Leslie M. Spencer

Partner

Leslie Spencer, co-chair of the firm's diversity committee, is a partner in the IP litigation practice working in the firm’s New York office. Leslie has 20 years of experience handling intellectual property disputes and counseling clients on a range of intellectual property matters involving patent, copyright and trade secret law. She is a registered patent attorney and represents clients in U.S. district courts as well as the Patent Trial and Appeal Board (PTAB), including inter partes review (IPR) and covered business method (CBM) reviews. Leslie has extensive experience in all phases of intellectual property litigation, including Markman claim construction proceedings, fact and expert depositions, Daubert and summary judgment motions, and trial. In addition, she advises clients on intellectual property strategy and asset protection, including licensing, acquisition and transfer transactions, as well as freedom-to-operate.

Leslie represents clients on matters involving a wide range of technologies, including financial technology (“Fintech”), computer software (including artificial intelligence), blockchain, network communications, encryption and security protocols, semiconductor design and manufacturing, automotive technology, medical devices and healthcare information technology, among others.

Leslie has been recognized by New York Law Journal as one of thirty “Top Women in Law 2016,” and among New York Metro Super Lawyers since 2013.

Prior to practicing law, Leslie worked for financial services and defense technology companies, and developed a smart card-based secure transaction system.

Experience

  • Dolby Laboratories, Inc. v. Intertrust Technologies Corp. (N.D. Cal.) – Representing Dolby in action for declaratory judgment of non-infringement of eleven patents asserted against digital cinema-related technology.
  • Carrum Technologies, LLC v. Ford Motor Company (D. Del.) – Defending Ford in patent infringement litigation involving adaptive cruise control technology. 
  • Godo Kaisha IP Bridge 1 v. Qualcomm (D. Del.) – Represented IP Bridge in infringement action asserting eight patents directed to semiconductor technology.
  • OHVA, Inc. v. PayStand, Inc. (D. Del.) – Represented B2B payment platform that was early adopter of blockchain technology in patent infringement litigation brought by non-practicing entity (NPE).
  • Attention, Inc. (Deconet) – Drafted blockchain-transferable software license, the Deconet Software License Agreement, a software license that can be purchased using BTC or ETH, and recorded on the Ethereum blockchain.
  • Digital Asset Trade Association – Represented blockchain trade association in connection with legislative proposals and public policy, including state blockchain-related legislation.  
  • Frank v. Gaos (U.S. Supreme Court) – Represented amici curiae the Center for Democracy & Technology, the Electronic Frontier Foundation, and the National Consumers’ League.
  • Ironworks Patents, LLC v. A Major Multinational Telecommunications Equipment Company (E.D. Tex.) – Defended a major multinational telecommunications equipment company in an action alleging infringement of five patents directed to various methods for user input and communication.
  • Rovi Technologies Corporation – Defended Rovi/TiVo in connection with inter partes review challenging patents related to interactive television program guides.
  • Yvolve Sports– Advised Yvolve Sports with regard to patent, copyright and trademark matters related to scooters, electronic skateboards 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.

Publications

Presentations

  • Moderator, “The Path Forward for Blockchain Technology: Exploring Recent Developments,” World Congress Summit on Protecting Innovations in the Financial Services Industry (July 25, 2019)
  • Speaker, “Best Practices in Inter Partes Review (IPR) Proceedings,” National Bar Association Annual Convention (July 22, 2019)
  • Speaker, “Preparing Your Strategy for a Shifting Pro-patent Environment," MIP US Patent Forum (April 3-4, 2019)
  • Moderator, “Enabling Diversity to Flourish in Your IP Department," MIP US Patent Forum (April 3-4, 2019)
  • Speaker, “Examine How Artificial Intelligence Innovation Will Force Change to the Framework of Intellectual Property Law,” World Congress Corporate IP Counsel Forum (March 28, 2019) 
  • Speaker, “Year in Review: How New Case Law Affects Litigation Strategy,” Managing Intellectual Property International Women’s Leadership Forum 2018 (December 4, 2018)
  • Speaker, “Assess the Health of the U.S. Patent System and the Erosion of Patent Rights," Summit on Protecting Innovations in the Financial Services Industry (July 25, 2018)
  • Speaker, “Explore the Legal Complexities of Blockchain,” 10th Annual Corporate IP Counsel Forum (March 14, 2018)
  • Speaker, “Protecting Your Software Innovation in Europe and USA,” Managing IP International Women’s Leadership Forum 2017 – San Jose (November 7, 2017)
  • Speaker, “The Future of Money,” California Minority Counsel Program (CMCP), 28th Annual Business Conference (October 26-27, 2017)
  • Speaker, “Anticipate Upcoming Changes in Regulation and their Impact on Patent Litigation,” 14th Annual Patents for Financial Services Summit (July 19-20, 2017)
  • Speaker, “Next Generation, Ethics & Diversity,” Federal Circuit Bar Association, 2017 Bench & Bar Conference (June 21-24, 2017)
  • Speaker, “Overcoming Blind Spots & Unconscious Bias to Create a culture of Inclusion,” Legalweek West Coast (June 12, 2017)
  • Speaker, “10 Defensive Strategies All High-Tech Companies Need to Know,” LOT Network IP Conference and Private Breakfast (May 11, 2017)
  • Speaker, “The Patent Trial and Appeal Board Turns 5,” PLI’s 11th Annual Patent Law Institute Seminar (April 18, 2017)
  • Speaker, “Evolving Robo Advisor Compliance Programs,” SIFMA’s Compliance & Legal Society Annual Seminar (March 20, 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)
  • LLM (Trial Advocacy), Temple University Beasley School of Law, 2006
  • JD, New York University School of Law, 1998
  • MBA, Stephen M. Ross School of Business at the University of Michigan, 1988
  • BS (Computer Science and Engineering), Massachusetts Institute of Technology, 1985
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