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Leslie M. Spencer

Leslie M. Spencer

Partner, New York
PHONE: 212-351-3410 FAX: 212-351-3401
Leslie Spencer is a trial litigator with over 20 years of experience handling patent infringement disputes. She represents clients in federal court as well as the Patent Trial and Appeal Board (PTAB).  Ms. Spencer is a registered patent attorney whose matters cover a range of technologies, including computer software (including artificial intelligence and blockchain), data encryption and security, network communications, semiconductor design and manufacturing, automotive systems, Fintech, medical devices and healthcare information technology. She also advises clients on intellectual property strategy, asset protection and transactions.
 
Ms. Spencer’s recent work included helping Dolby Laboratories resolve a multi-jurisdiction dispute involving ten digital rights management patents asserted by Intertrust Technologies against Dolby and its cinema customers.  Intertrust claimed $2 billion in damages.  Dolby, an innovator in digital cinema technology, successfully challenged Intertrust’s patents in inter partes review (IPR) proceedings, and with strong motion practice in district court.
 
Ms. Spencer was also part of the Desmarais team that helped Lenovo successfully defend a patent infringement action in the Western District of Texas.  Non-practicing entity ACQIS LLC asserted nine patents related to high-speed interconnects for computer modules, and accused a large variety of Lenovo-branded computers.  Ms. Spencer and the team positioned Lenovo for pre-trial resolution, including with motion practice on the preclusive effect of a related Federal Circuit decision.
 
Ms. Spencer was recognized by Benchmark Litigation among the "Top 250 Women in Litigation" in 2021, 2022 and 2023, and as a New York Metro “Super Lawyer” in 2023 and the ten preceding years.  In 2022 and 2023, she was also named as a Managing Intellectual Property IP Star and listed in IAM Patent 1000 rankings.  In 2018, she was part of the team honored by Financial Times Innovative Lawyers for developing a blockchain transferable software license.  Ms. Spencer was also recognized as one of the “Top Women in Law” in 2016 by the New York Law Journal and one of the “Top Women Attorneys in the New York Metro Area” in 2014 by the New York Times Magazine.
 
Prior to joining the firm, Ms. Spencer was a partner in the New York City office of an international law firm where she practiced intellectual property litigation, and was co-chair of the firm’s diversity committee. Before launching her legal career, she worked as a software engineer in the financial services and defense industries, and helped to develop a smart card-based secure transaction system.

Courts

  • United States Supreme Court
  • United States Court of Appeals for the Federal Circuit
  • United States District Court for the Eastern District of Wisconsin
  • United States District Court for the Eastern District of New York
  • United States District Court for the Southern District of New York

Other Distinctions

  • Managing Intellectual Property, IP STAR
  • Benchmark Litigation, "Top 250 Women in Litigation"
  • Super lawyers, New York Metro, Super Lawyer
  • Managing Intellectual Property, IAM Patent 1000
  • New York Law Journal, “Top Women in Law”
  • New York Times Magazine, “Top Women Attorneys in the New York Metro Area”

Boards & Committees

  • New York Intellectual Property Law Association, Co-Chair, Patent Litigation Committee
  • Intellectual Property Owners Association, Software-Related Inventions Committee, Member
  • Silicon Valley Urban Debate League, Board Member

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Representative Matters

Representative Patent Matters (Defensive) 

  • Defending a leading consumer electronics company in a patent infringement action in the Western District of Texas (WDTX) related to encryption of digital identity data using a microprocessor identifier. 
  • Representing Cisco in a patent infringement action in the Eastern District of Texas related to network access and management technology.
  • Represented Dolby Laboratories in action for declaratory judgment of non-infringement, and related IPR proceedings, respecting ten digital rights management patents asserted against digital cinema equipment.
  • Represented Lenovo in WDTX patent infringement action related to high-speed interconnects between computer modules.
  • Defended a major U.S. auto manufacturer in patent infringement litigation involving adaptive cruise control technology.
  • Defended a leading technology company in a patent infringement case related to remote collection of exercise-related data.
  • Defended a global information and communications technology company in an action alleging infringement of five patents directed to methods for user input and communication in mobile devices.
  • Defended enterprise technology company in a patent infringement matter relating to databases for large language models.
  • Defended a large bank holding company in multi-district litigation (MDL) involving assertion of integrated circuit and secure transaction patents against mobile banking. Also represented client in petition for Covered Business Method (CBM) review before Patent Trial and Appeal Board.
  • Defended a major provider of human resources management software and services in patent infringement action, and invalidated patent for unpatentable subject matter under Alice decision.
  • Defended a major provider of human resources management software and services in multi-jurisdiction infringement action involving patents directed to electronic accounting and procurement methods asserted against oil field service providers. Obtained summary judgment of non-infringement in client’s Southern District of Texas declaratory judgment action. Also represented client in related reexamination proceeding.
  • Defended major insurance company against assertions of infringement involving patents related to insurance underwriting based on vehicle operating data (“telematics”). Also obtained stay pending CBM review.
  • Represented a major U.S. pharmaceutical company in multi-defendant NPE litigation involving patents related to network security, user and server authentication methods.
 

Representative Patent Matters (Offensive) 

  • Represented a Japanese patent fund in infringement action asserting eight patents directed to semiconductor manufacturing technology.
  • Represented a major entertainment technology company in an International Trade Commission (ITC) investigation involving patents relating to interactive program guides, and related IPRs proceedings.
  • Represented a global electronics and telecommunications company in patent infringement litigation asserting patents covering various technologies including computer graphics application programming interfaces (APIs), instant messaging and mobile application updates.
 

Other Representative Matters 

  • Represented a leading financial software and media company in a trade secret case concerning automated trading software systems.
  • Represented The Center for Democracy and Technology, The Electronic Frontier Foundation, and The National Consumers League amici curiae before the U.S. Supreme Court in Frank v. Gaos.
  • Assisted in draft of blockchain-transferable software license, Deconet Software License Agreement, to be purchased using BTC or ETH, and recorded on the Ethereum blockchain.

News & Publications

  • Leslie Spencer Discusses with Managing IP How She Supports the Professional Development of Junior Attorneys (April 8, 2021) Read the Article
  • Leslie Spencer Provides Insights to Managing IP about the Impact of IP Trial Delays, Managing IP (January 22, 2021)  Read the Article
  • Leslie Spencer Moderates IP Leadership Panel at Managing IP’s U.S. Patent Forum, Press Release (October 14, 2020) Read the Article
  • Federal Circuit COVID-19 Response Leaves Lawyers Worried About Briefs Precedent, Managing IP (April 24, 2020) Read the Article
  • Fintech Litigation To Watch In 2020, Law360 (January 1, 2020)  Read the Article
  • Considerations for Artificial Intelligence Patenting and Enforcement, December 9, 2017
  • Defensive Patenting Strategies for Blockchain Innovators, October 10, 2017
  • Supreme Court’s TC Heartland Decision Will Move Venue Out of E.D. Texas, July 31, 2017

Events

  • IAM IPBC Global 2023, Masterclass: Lessons from IP Leadership, June 12, 2023 
  • 2019 IP Litigation in Review and How New Case Law Affects Your Litigation Strategy, December 3, 2019
  • Demonstrating Software IPs ROI, October 2, 2019
  • The Path Forward for Blockchain Technology: Exploring Recent Developments, July 25, 2019
  • Best Practices in Inter Partes Review (IPR) Proceedings, July 22, 2019
  • Preparing Your Strategy for a Shifting Pro-patent Environment, April 3, 2019
  • Enabling Diversity to Flourish in Your IP Department, April 3, 2019
  • Examine How Artificial Intelligence Innovation Will Force Change to the Framework of Intellectual Property Law, March 28, 2019
  • Year in Review: How New Case Law Affects Litigation Strategy, December 4, 2018
  • Assess the Health of the U.S. Patent System and the Erosion of Patent Rights, July 25, 2018
  • Blockchain Looks To Avoid Patent Wars Of The Past, Law360 (July 12, 2018)  Read the Article
  • Explore the Legal Complexities of Blockchain, March 14, 2018
  • Protecting Your Software Innovation in Europe and USA, November 7, 2017
  • The Future of Money, October 26, 2017
  • Anticipate Upcoming Changes in Regulation and their Impact on Patent Litigation, July 19, 2017
  • Next Generation, Ethics & Diversity, June 21, 2017
  • Overcoming Blind Spots & Unconscious Bias to Create a Culture of Inclusion, June 12, 2017
  • 10 Defensive Strategies All High-Tech Companies Need to Know, May 11, 2017
  • The Patent Trial and Appeal Board Turns Five, April 27, 2017 Evolving Robo Advisor Compliance Programs, March 20, 2017
  • PTAB Trials: Tips and Strategies for Practitioners, November 29, 2016 Protect FinTech Innovation Post-Alice, July 20, 2016
  • Protecting Computer-Related Inventions in the Aftermath of Alice, June 9, 2016
  • Impact of Mobile Patents on Banking, Insurance, and Wall Street, July 22, 2015

EDUCATION

Temple University, Beasley School of Law, LL.M., Trial Advocacy, 2006
 
New York University School of Law, J.D., 1998
 
University of Michigan Ross School of Business, M.B.A., 1988

Massachusetts Institute of Technology, B.S., Computer Science and Engineering, 1985

ADMISSIONS

2001, New York

Registered to Practice before the United States Patent and Trademark Office
 

OFFICES