William C. Spence

William C. SpencePartner

As a trial lawyer and founding partner of SpencePC, Mr. Spence assists both individual and business clients to obtain their best possible outcome in contentious legal matters. His extensive experience includes litigation, arbitration, and mediation involving a wide-range of intellectual property and complex commercial disputes.

More specifically, Mr. Spence serves clients by providing advocacy and advice in the areas of: patent infringement; trade secret misappropriation; unfair competition (including conspiracy, tortious interference, and related antitrust claims); breach of contract; post-grant patent proceedings (e.g., inter partes review); trademark infringement; copyright infringement; and other commercial disputes. He has litigated claims in both state and federal courts throughout the United States. Additionally, he has extensive experience with patent monetization strategies and management of complex, international patent infringement litigation involving multiple parties and jurisdictions, including Asia.

Mr. Spence is a registered patent attorney and published author and frequent speaker on patent monetization and other intellectual property issues. He maintains an AV Preeminent® rating from Martingale-Hubbell®, the highest possible rating for an attorney for both ethical standards and legal ability, and he has been repeatedly recognized in editions of the in editions of the Legal 500 U.S for Trade Secrets. During his career, he has also been repeatedly recognized as a “Super Lawyer,” and an “Illinois Rising Star“, in the area of intellectual property.

Mr. Spence is a graduate of the University of Notre Dame, where he obtained separate Bachelor of Science degrees in Chemical Engineering and Biophysics (“Physics in Medicine”), and a graduate of the University of Houston Law Center.  Prior to forming SpencePC, he spent twelve years practicing law with Kirkland & Ellis LLP in Chicago, IL and Tokyo, Japan.

Education

  • Law School – University of Houston Law Center, J.D., 2002, cum laude
  • Undergraduate – University of Notre Dame, B.S., Biophysics, B.S., Chemical Engineering, 1996

Court Admissions

  • 2002, Illinois
  • Registrered to practice before the United States Patent and Trademark Office

Professional Memberships

  • Notre Dame Monogram Club, 1997-Present
  • American Bar Association, Intellectual Property Division, 2002-Present
  • Fellow, United States-Japan Leadership Program, 2007-Present
  • Federal Circuit Bar Association, 2010-Present
  • The Richard Linn American Inn of Court, 2011-Present (Mentor Chair, 2014-2015)
  • Tokyo IP American Inn of Court, 2013-2015
  • Licensing Executives Society USA, 2011-2015 (Certified Licensing Professional* (CLP); former member of Life Sciences Sector
  • Illinois Supreme Court Commission on Professionalism, Lawyer-to-Lawyer Mentoring Program, 2011-2013
  • Licensing Executives Society International, 2010-2012 (former Vice-Chair, Young Member Congress)
  • Board Member, Ada S. McKinley Foundation, 2008-2012
  • Former Board Member, Alliance for the Great Lakes (Lake Michigan Federation), 2003-2005
    *The Supreme Court of Illinois does not recognize certifications of specialties in the practice of law and the certification is not a requirement to practice law in Illinois.

Current Representations and new matters

  • Ocean Tomo v. Hilco (2016-Present) Trade Secret & Unfair Competition Litigation.
  • Ocean Tomo, LLC v. Jonathan Barney and Patent Ratings LLC (2016-Present) Complex Commercial and Patent Litigation.
  • Talsk Research Inc. v. Evernote Corp. (2016-Present) Patent Litigation.
  • Umbanet v. Epsilon Data Mgmt. (2016-Present) Patent Litigation.
  • P. Muller v. O. Rada (2016-Present) Commercial/Breach of Contract.
  • Human Sciences HC Limited v. FedEx (2016-Present) Patent Litigation.
  • M. Friedman v. Ocean Tomo, LLC (2016-Present) Trade Secret & Unfair Competition Litigation.
  • XA Investments (2016-Present) IP Counseling.
  • XMS Capital Partners (2016-Present) IP Counseling.
  • Fatigue Fracture Technology v. Navistar, Inc. (2016-Present) Patent Litigation.
  • Beastgrip v. Photography and Cinema Inc. and Ye Xu (2016-Present) Patent Litigation.
  • Adaptive Avenue Associates, Inc. v. Sally Beauty Supply (2016-Present) Patent litigation.
  • treX Property AB v. Various (2016-Present) Patent litigation.
  • Baja Foods, LLC (2015-Present) IP Counseling.
  • The Alpha Automotive Group, LLC v. Cunningham Chrysler of Edinboro, Inc. (2015-Present) Breach of contract litigation.
  • Reshare Commerce, LLC (2015-Present) Patent advice concerning U.S. Pat. No. 6,594,641, entitled “Computer facilitated product selling system.”

Past Representations

  • Talsk Research v. Microsoft Corp. (2016) Patent Litigation.
  • McAfee Enterprises v. Ashley Entertainment Corporation (2016) Patent litigation.
  • GinJoint, LLC v. Robert W. Birks (2016) Computer Fraud and Abuse Act litigation.
  • Apex Colors, Inc. v. Chemworld International Ltd., et al. (2015-2016) Trade secret and unfair competition litigation involving allegations of misappropriation of chemical-related trade secrets and confidential information by a former employee.
  • Indie Fresh Holdings LLC (2015) Commercial litigation advice.
  • Butamax(TM) Advanced Biofuels LLC v. Gevo, Inc. (2011-2013) Patent litigation concerning U.S. Pat. Nos. 7,851,188 and 7,993,889, entitled “Fermentive production of four carbon alcohols,” 8,017,375, entitled “Yeast organism producing isobutanol at a high yield,” and 8,017,376, entitled “Methods of increasing dihydroxy acid dehydratase activity to improve production of fuels, chemicals, and amino acids.”
  • Auriga Polymers Inc., et al. v. M&G USA Corporation, et al. (2011-2013) Patent litigation concerning U.S. Pat. Nos. 7,943,216, entitled “Method to Make Single-Layer PET Bottles with High Barrier and Improved Clarity,’ and 7,879,930, entitled “Colored Oxygen Scavenging Polymers.”
  • M&G USA Corporation, et al. v. Auriga Polymers Inc., et al. (2011-2013) Patent litigation concerning U.S. Pat. Nos. 7,438,960, entitled “Article Comprising Light Absorbent Composition to Mask Visual Haze and Related Methods,” 8,052,917, entitled “Process to Make an Article Comprising Light Absorbent Composition to Mask Visual Haze and Related Methods,” and RE42,925, which is a reissue of 6,346,307, entitled “Polyester Resin Blends with High-Level Gas Barrier Properties.”
  • WASH Multifamily Laundry Systems, LLC v. Mac-Gray Corporation (2010-2012) Arbitration involving trade secret, breach of contract, unjust enrichment and related unfair competition claims.
  • Pollard Banknote Limited Partnership v. Loveland Machines Inc., et al. (2012) Trade secret
    and breach of contract litigation involving technologies, processes, and equipment to manufacture instant-win scratch tickets.
  • Howmedica Osteonics Corp. et al v. Zimmer Inc., et al. (2011-2012) Patent litigation concerning U.S. Pat. No. 6,475,243, entitled “Acetabular Cup Assembly with Selected Bearing.”
  • Eastman Chemical Company v. AlphaPet, Inc., et al. (2009-2012) Trade secret, breach of contract, and patent litigation concerning U.S. Patent Nos. 6,906,164 (entitled “Polyester Process Using a Pipe Reactor “), 7,358,322 (entitled “High IV Melt Phase Polyester Polymer Catalyzed with Antimony Containing Compounds”), and 7,459, 113 (entitled “Process of Making a Container from Polyester Polymer Particles Having a Small Surface to Center Intrinsic-Viscosity Gradient”).
  • INEOS Bio USA LLC, et al. v. Coskata, Inc., et al. (2010-2012) Trade secret, breach of contract, inducement, and tortious interference litigation involving biotechnology processes for manufacturing ethanol.
  • Magna Mirrors of America, Inc. v. Guardian Industries Corp., et al. (2005-2011) Complex patent litigation and counseling concerning U.S. Pat. Nos. 5,551,197, 5,966,874, 6,128,860, 6,298,606, 7,588,652, 5,853,895, 6,068,719, 6,319,344, and 7,332,225, involving polyurethane chemistry and glass assembly manufacturing processes in the automotive industry.
  • Reshare Commerce, LLC v. MWRC Internet Sales, LLC, et al. (2009-2011) Patent litigation concerning U.S. Pat. No. 6,594,641 (entitled “Computer Facilitated Product Selling System”).
  • Magna Donnelly Corp. v. Guardian Industries Corp., et al. (2006-2010) Trade secret, breach of contract, unjust enrichment, civil conspiracy, tortious interference with contractual relationships, and tortious interference with business and economic relationships litigation involving polyurethane chemistry and the manufacture of glass assemblies for the automotive industry.
  • SolarAegis, LLC (2009-2010) Intellectual property counseling and licensing involving proprietary chemical formulations.
  • Chevron Philips Chemical Company LP v. INEOS Group Ltd., et al. (2009) Trade secret, breach of contract, and related unfair competition litigation and counseling related to high density polyethylene manufacture.
  • Research in Motion, Ltd., Research in Motion Corporation (2009) Multi-jurisdiction patent litigation and counseling involving mobile communications technology.
  • Borden et al. v. AMF Bowling Worldwide, Inc. et al. (2007-2008) Patent litigation and counseling concerning U.S. Pat. No. 5,846,138 (entitled “Method and apparatus for bowling in minimal ambient light “).
  • Nirvana Technology, Inc. (2007) Intellectual property counseling and licensing negotiations involving online reservation networks.
  • GolfSwitch, Inc. v. TeeConnect, LLC (2006-2007) Patent litigation and counseling concerning U.S. Pat. No. 7,016,857 (entitled “Method and device implementing a seamless user/service reservation network”).
  • TeleCheck International, Inc. v. LML Payment Systems, Inc., et al. (2006-2007) Patent litigation and counseling concerning U.S. Pat. Nos. 5,679,938 (entitled “Methods and systems for interactive check authorizations”) and 5,679,940 (entitled “Transaction system with on/offline risk assessment”).
  • Fiskars Brands Japan K.K and Hanaoka K.K. (2005) Patent litigation and counseling concerning a Japanese design patent for specialty shears.
  • Hyatt International Holdings Co., et al. (2005) Hyatt’s acquisition of the upscale extended-stay brand and franchise system of 21 Summerfield Suites branded hotels and six owned assets from partnerships between affiliates of The Blackstone Group, the Gencom Group and Lehman Brothers.
  • Google Japan Inc. (2005) Counseling involving Google’s Japanese service and Japan’s Act Concerning Prohibition of Private Monopolization and Maintenance of Fair Trade.
  • PR Asia S.A.S. and Pernod Ricard S.A. (2005) Counseling and negotiation of a nationwide distribution agreement between Pernod and Kirin for distribution of Pernod’s products in Japan.
  • Kyocera v. Iscar Japan (2005) Patent litigation and counseling concerning a Japanese patent for a specialty cutting tool.
  • Centerpulse Japan K.K. (2005) Counseling and advice to board of directors concerning dispute under the Japanese Commercial Code.
  • Bausch & Lomb Inc. v. Alcon Laboratories, Inc. (2004-2005) Patent litigation and counseling involving U.S. Pat. No. 6,660,297 (entitled “Nutritional supplement to treat macular degeneration”).
  • Shiseido Company, Ltd. (2004) IP counseling involving U.S. Patent No. 5,587,148 (entitled “Visibly transparent UV sunblock agents and methods of making same”).
  • Kraft Foods, Inc. (various) (2003-2006) Patent litigation and counseling involving patented nutritional compositions and trademarks.
  • Gary and Cathy Henry, et al. v. The Dow Chemical Company (2003-2006) Civil litigation and counseling involving allegations of chemical contamination.
  • Broadcast Music Inc. v. Randall Hull Enterprises, Inc. (2003) Copyright infringement litigation and counseling to enforce intellectual property rights.
  • Chase Products Co. v. CCL Industries, Inc. and Zotos International, Inc. (2003) Patent litigation and counseling involving U.S. Pat. No. 6,510,967 (entitled “Ergonomic aerosol dispensing system”).
  • International Game Technology (2003) IP counseling involving U.S. Patent No. No. 5,283,422 (entitled ” Information transfer and use, particularly with respect to counterfeit detection”).
  • Third Wave Technologies, Inc. v. Eragen Biosciences, Inc. (2003) Patent, breach of contract, and related unfair competition litigation and counseling involving United States Patent Nos. 6,438,314 (entitled ” Invasive cleavage of nucleic acids”) and 6,090,543 (entitled “Cleavage of nucleic acids”).
  • International Game Technology and IGT v. Aristocrat Leisure Limited, et al. (2002-2003) Patent, trademark, trade secret, breach of contract, and unfair competition litigation and counseling related to cashless gaming, data authentication, progressive gaming, coin ejectors, and game play.
  • Eveready Battery Company, Inc. v. Rayovac Corporation (2002) Patent litigation and counseling involving U.S. Patent No. 5,464,709 (entitled “Alkaline cells that are substantially free of mercury”).
  • Anchor Gaming et al. v. Acres Gaming Inc. (2001) Patent litigation and counseling involving U.S. Patents Nos. 5,823,874 (entitled “Method of playing game and gaming device with an additional payout indicator”) and 5,848,932 (entitled “Method of playing game and gaming games with an additional payout indicator”).

Printed or Online Publications

  • “FTC Report Recommendations Largely Legislative in Scope in New Patent Assertion Entity Report,” IP Watchdog, October 27, 2016.
  • “FTC Report on PAEs Could Have an Outsized Effect on U.S. Patent Reform Debate,” IP Watchdog, August 16, 2016.
  • “Automakers Lead Silicon Valley in Self-Driving Car Development,” IP Watchdog, July 11, 2016.
  • “Oculus Rift Patents that Change the Virtual Reality Landscape,” IP Watchdog, May 31, 2016.
  • “How Drone Disabling Patents Change Everything,” IP Watchdog, April 6, 2016.
  • “Clean Energy Patent Market May Offer Significant Financial Gains,” IP Watchdog, March 9, 2016.
  • “Fitbit alleges Patent Infringement in Growing Market for Fitness Tracking Devices,” IP Watchdog, January 6, 2016.
  • “Document Discovery in Patent Litigation,” 2016 Supplement for Patent Litigation Strategies Handbook (4th ed.), Chapter 15, 2016.
  • “Overview of U.S. Patent Laws,” The International Comparative Legal Guide to:  Patents 2017 (7th ed.), Global Legal Group, 2016.
  • “Document Discovery in Patent Litigation,” Patent Litigation Strategies Handbook (4th. ed.), Chapter 15, 2015.
  • “Overview of U.S. Patent Laws,” The International Comparative Legal Guide to Patents (5th ed.), Global Legal Group, 2015.
  • “Document Discovery in Patent Litigation,” 2014 Supplement for Patent Litigation Strategies Handbook (3rd. ed.), Chapter 13, 2010.
  • “Document Discovery in Patent Litigation,” 2013 Supplement for Patent Litigation Strategies Handbook (3rd. ed.), Chapter 13, 2010.
  • “Document Discovery in Patent Litigation,” 2012 Supplement for Patent Litigation Strategies Handbook (3rd. ed.), Chapter 13, 2010.
  • “Overview of U.S. Patent Laws,” The International Comparative Legal Guide to Patents (2nd ed.), Global Legal Group, 2012.
  • “Document Discovery in Patent Litigation,” 2011 Supplement for Patent Litigation Strategies Handbook (3rd. ed.), Chapter 13, 2010.
  • William Cory Spence and Gitte Lykke Pedersen, Scraping electronic data from websites, Copyright World, Sept. 2009, at 18.

Speaking Engagements

  • “Legal Issues for Innovators & Inventors” Webinar, Financial Poise and West LegalEdcenter, December 16, 2016
  • “Setting Up a Website” Webinar, Financial Poise and West LegalEdcenter, November 18, 2016
  • “Buying & Selling IP” Webinar, Financial Poise and West LegalEdcenter, October 21, 2016
  • “Choosing & Protecting Your Brand” Webinar, Financial Poise and West LegalEdcenter, September 23, 2016
  • “Nuts & Bolts of Trade Secrets,” Financial Poise and West LegalEdcenter, Chicago, IL, May 26, 2016
  • “Innovating the Unknown – Innovative and Fresh Ideas for Licensing Products and Developing “White Space” Growth Opportunities,” Licensing Executives Society (USA and Canada) 2016 Spring PanAm Meeting, Houston, TX, April 27, 2016
  • “Nuts & Bolts of Trademarks,” Financial Poise and West LegalEdcenter, Chicago, IL, April 21, 2016
  • “Nuts & Bolts of Patents,” Financial Poise and West LegalEdcenter, Chicago, IL, February 22, 2016
  • “IP-What Every Lawyer & Client Must Understand,” Financial Poise and West LegalEdcenter, Chicago, IL, January 28, 2016
  • “An Ounce of Prevention:  What Patent Litigators and Litigants Need to Know About Amendments to the Federal Rules,” Bloomberg BNA Webinar, December 15, 2015
  • “FRAND and Standard Essential Patents,” Tokyo Intellectual Property American Inn of Court 6th Regular Meeting, Tokyo, Japan, July 3, 2014
  • “Patent Law for Engineers,” SAE World Congress, Detroit, MI, April 11, 2014
  • “Strategies for Reducing the Threat of Litigation from Patent Assertion Entities,” Licensing Executives Society (USA and Canada) Mid-Year Meeting, New York, NY, March 26, 2014
  • “Patent Law for Engineers,” SAE Automotive Headquarters, Detroit, MI, May 20, 2013
  • “Protecting the deal: preserving the attorney-client privilege in IP transactions,” Licensing Executives Society (USA and Canada) Webinar, February 13, 2013
  • “Ethical Issues in Parallel International IP Litigation,” Richard Linn American Inn of Court, Chicago, IL, September 2012
  • “Controlling Costs with New E-discovery Models,” Kirkland & Ellis LLP Technology & Law Seminar, Chicago, IL, May 2012
  • “Preserving Privilege in IP Transactions,” LES USA Life Sciences Sector Executive Committee, April 2012 “Mock Claim Construction Hearing,” Japan Intellectual Property Association, Tokyo, Japan, February 2012
  • “US Patent Litigation Update,” International Patent Litigation 2011 (sponsored by IBC Legal); London, England, December 2011
  • “Recent Developments in U.S. Patent Litigation,” Tokyo, Japan, July 2011
  • “Patent Litigation…What Does a Biopharma Licensing Executive Need to Know and Why Should They Care?” LES Spring Meeting, New York, NY, May 2011
  • “Top 10 Things To Know About U.S. Patent Litigation,” Tokyo, Japan, February 2011
  • “Recent Case-Law on Damages for Patent Infringement, including possible limitations for Non-Practicing Entities,” LES Scandinavia Annual Conference, Stockholm, Sweden, September 2010
  • “The Intersection of Intellectual Property and Education” US-Japan Leadership Foundation Conference, Seattle, WA, July 2008
  • “Is the cultural gap insurmountable? What can our two countries learn from each other?” US-Japan Leadership Foundation Conference, Kyoto, Japan, July 2007
  • “Key Legal Issues in Licensing,” LES Technology Transfer Seminar, Boston, MA, October 2006
  • “Antitrust Issues in Patent & Technology Licensing,” LES International Annual Meeting, Seoul, Korea, April 2006
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