Mehrnaz Boroumand Smith focuses her practice on intellectual property and complex commercial litigation matters. She has successfully represented clients, including well known high technology companies, in litigation regarding claims of utility and design patent, copyright, and trademark infringement, as well as breach of contract, breach of warranty, fraud, unfair competition, and misappropriation of trade secrets. She also has successfully defended clients in class action cases. Ms. Boroumand Smith has represented clients in a variety of fields and industries covering technology and disputes relating to software, hardware, semiconductors, digital cameras, lasers, video gaming, information technology installations and licenses, arts and crafts, toys, and manufacturing conveyors. She has appeared in federal courts (at both the district and appellate levels) and California state courts, and she is also experienced in arbitration matters.

Ms. Boroumand Smith also regularly advises clients regarding their intellectual property enforcement strategies, including online enforcement, social media monitoring, and right of publicity issues. She has also worked with clients in assessing cybersecurity breaches.

Ms. Boroumand Smith serves on the firm’s executive committee and previously served on the firm’s Diversity Council. She was Managing Partner of the San Francisco office from March 2014 through January 2017. She also was an adjunct professor at the University of San Francisco School of Law, where she taught copyright, trademark, and privacy issues for the Internet and Intellectual Property Justice Clinic from 2008-2016.

Ms. Boroumand Smith has been consistently recognized as a Northern California "Super Lawyer" in the area of Intellectual Property by Super Lawyers magazine (2013-2017) and prior to 2013, she was recognized by Super Lawyers as a “Rising Star” from 2009 to 2012. She was recommended by Legal 500 US in 2015 for Trade Secrets Litigation. Ms. Boroumand Smith was named a “Future Litigation Star” among California attorneys in the 2016 edition of Benchmark Litigation.

Representative Engagements

Copyright, Trademark and Trade Secrets

Apple Inc. v. Psystar Corporation. Obtained summary judgment and a permanent injunction against a computer company utilizing Apple’s copyrighted operating system software on non-Apple hardware based upon copyright infringement and violation of the Digital Millennium Copyright Act. The ruling resulted in a published opinion which affirmed liability for distributing copies of operating software and circumvention technology. The Ninth Circuit affirmed the permanent injunction and inapplicability of copyright misuse. Apple Computer Inc. v. Psystar Corporation, 673 F.Supp.2d 943 (N.D. Cal. 2009), 673 F.Supp.2d 931 (N.D. Cal. 2009), 586 F.Supp. 2d 1190 (N.D. Cal. 2008), 658 F.3d 1150 (9th Cir. Sept. 28, 2011).

Actuate Corporation v. Aon Corporation et al. Represented plaintiff Actuate Corporation in U.S. District Court for the Northern District of California in a breach of contract, copyright infringement and unfair competition action against defendants AON Corporation and TWG Warranty Group based on their use of Actuate’s software. Matter settled on the eve of trial.

The Prudential Insurance Company of America v. Actuate Corporation. Currently representing defendant Actuate Corporation in U.S. District Court for the District of New Jersey in response to a request for declaratory relief filed by The Prudential Insurance Company of America for breach of contract and violation of the New Jersey Computer Fraud Act and with regard to counterclaims by Actuate for breach of contract and copyright infringement. The case settled favorably earlier this year.

MB Technologies v. Oracle. Represented Oracle in fraud and copyright infringement case filed by MB Technologies, a Georgia-based software company accusing Oracle of unlawfully using MB's technology for the creation of user interfaces for Fusion Applications. The case settled after mediation with JAMS.

Oracle Corporation v. Light Reading, Inc. Represented plaintiff in trademark infringement case. Case settled after preliminary injunction was granted.

Patents

iMTX Strategic LLC v. Rhapsody International Inc. Representing Rhapsody International, a leading provider of streaming music services, against claims of patent infringement involving a single patent related to the transfer of digital media files over the Internet. No. 1:15-cv-00036-GMS (D. Del. Filed Jan. 1, 2015) and now pending in the Northern District of California.

TecSec v. IBM et al. Representing Oracle in patent infringement matter covering encryption technology and software and hardware products before the Eastern District of Virginia.

In the Matter of Certain Rubber Antidegradants II. Prevailed in obtaining summary determination of matter and dismissal of complainant’s complaint before the International Trade Commission on behalf of large Korean chemical manufacturer.

Technology Properties Limited v. Fujitsu et al. Represented a manufacturer of microprocessors in the Eastern District of Texas. The matter settled confidentially.

In the Matter of Certain Electronic Educational Devices and Components Thereof. Represented respondent, a distributor of educational toys in obtaining a settlement within several months of the filing of the complaint in the International Trade Commission.

International Rectifier v. IXYS Corporation, Central District of California. Represented defendant in a patent infringement action concerning design and fabrication of power MOSFET semiconductor devices.

Commercial and Contracts

Thomas Long v. Ingenio, Inc. Representing defendant Ingenio Inc. (d/b/a AT&T Interactive) in U.S. District Court for the Northern District of California with regard to false advertising and unfair competition claims. Won summary judgment motion in favor of Ingenio. The case is currently on appeal.

Wall Street Rarities Inc. v. Oracle. Represented Oracle in this case brought by an Internet distributor of rare coins that had licensed Oracle software. The complaint alleged fraud, negligence, negligent misrepresentation, breach of contract and breach of express and implied warranties of merchantability and unjust enrichment. Case reached confidential settlement.

Accord Human Resources v. Oracle. Represented Oracle in this case involving claims of breach of contract, rescission, fraud, fraudulent misrepresentation and breach of warranty. Settled the case after successful transfer to the U.S. District Court in the Northern District of California.

Electronic Data Systems Corporation v. Aspect. Represented client in breach of contract, fraud and unfair competition dispute over an IT outsourcing project. Took direct and cross examinations of several witnesses at arbitration.

Oracle Corporation v. Smithfield Foods. Represented plaintiff in breach of contract dispute. Case settled in confidential settlement.

Tri-Valley Growers v. Oracle Corporation. Represented plaintiff in a software performance dispute. Case was settled confidentially after filing of summary judgment motions against defendant.

Professional & Community Activities

American Bar Association, Member (1998-present)

American Intellectual Property Law Association, Member (1995-present)

Bar Association of San Francisco, VLSP Board (2010-2013)

Education

  • George Washington University Law School, J.D. (1998)
    Public Contracts Law Journal, Moot Court Board
  • University of California, Berkeley, B.A., Political Economies of Industrialized Societies (1993)

Bar Admissions

  • California (1998)

Admissions

  • U.S. Court of Appeals for the Federal Circuit (2003)
  • U.S. District Court for the Central District of California (2003)
  • U.S. District Court for the District of Colorado (2003)
  • U.S. Court of Appeals for the Ninth Circuit (1998)
  • U.S. District Court for the Northern District of California (1998)

Who We Are

Two Embarcadero Center, Suite 1900
San Francisco, CA, 94111
USA
t +1 415.273.7559
f +1 415.723.7205

Mehrnaz Boroumand Smith

Experience Highlights

Embarcadero Systems v. Vascor
Represented Vascor, a subsidiary of American President Lines (APL) in this suit involving breach of contract relating to a software system licensed, more
Computer Access Technology Corporation v. Catalyst Enterprises Inc.
Represented defendant, an electronic testing equipment manufacturer, in copyright, trade dress and unfair competition trial. Matter settled more
McGee v. Ross Stores Inc.
Represented defendant in class action lawsuit involving the Fair and Accurate Credit Transaction Act. more
iMTX Strategic LLC v. Rhapsody International Inc.
Representing Rhapsody International, a leading provider of streaming music services, against claims of patent infringement involving a single patent more