Mehrnaz Boroumand Smith focuses her practice on intellectual property and complex commercial litigation matters. Her experience includes representing high technology companies in litigation regarding claims of patent, copyright, and trademark infringement, as well as breach of contract, breach of warranty, fraud, unfair competition and misappropriation of trade secrets. She has represented clients in a variety of fields and industries, including software, hardware, semiconductor, IT outsourcing, laser, retail, video gaming, arts and crafts, and toys. She has appeared in federal and state courts and is also experienced in arbitration matters. Ms. Boroumand Smith has also worked on patent, copyright, trademark and trade secret cases at both the district and appellate court levels. She has dealt in depth with breach of contract, breach of warranty, breach of the implied covenant of good faith and fair dealing, fraud and unfair competition issues.
Ms. Boroumand Smith is an adjunct professor at the University of San Francisco School of Law, where she has been teaching copyright, trademark and privacy issues in the Internet and Intellectual Property Justice Clinic since spring of 2008. She also Co-chairs the firm’s Diversity Council. Ms. Boroumand Smith was recognized as a Northern California "Rising Star" in 2012 and the three years immediately preceding by SuperLawyers magazine.
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.
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 confidentially after post-trial motions were granted in client's favor.
Oracle Corporation v. Light Reading, Inc. Represented plaintiff in trademark infringement case. Case settled after preliminary injunction was granted.
Sony Computer Entertainment America, Inc. v. Bleem, LLC. Represented plaintiff in action involving use of copyrighted screen shots in comparative advertising and misappropriation of trade secrets.
Sony Computer Entertainment, Inc. v. Connectix Corp. Represented plaintiff in copyright infringement action dealing with issues of fair use in the context of reverse engineering and intermediate copying. The case also included misappropriation of trade secrets claims.
B.I. Systems LLC v. Actuate Corporation et al. The firm represented Actuate Corporation, a leading developer of business intelligence and enterprise performance software, as defendant in a patent infringement action related to a patent for a method and system for computer-based visual data evaluation. Obtained favorable settlement. B.I. Systems LLC v. Actuate Corporation et al., No. 10472 (M.D. Fla. filed Sep. 6, 2011).
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.
In the Matter of Certain Silicon Microphone Package and Products. Represented manufacturer of silicon microphone products before the International Trade Commission.
Technology Properties Limited v. Fujitsu et al. Represented a manufacturer of microprocessors in the Eastern District of Texas. The matter settled confidentially.
Ellison Educational Equipment, Inc. v. QuicKutz. Represented plaintiff in patent inventorship, copyright and trademark matter in the Central District of California. The matter settled confidentially.
Global Cash Access v. Game Financial Corporation. Represented plaintiff in a patent infringement action concerning cash access services for casino patrons in the District of Nevada. 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
Smith v. EyeWonder, Inc. Representing defendant in U.S. Disctrict Court for the Northern District of California with regard to a motion to stay pending arbitration in Georgia. Court granted motion to stay.
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.
McGee v. Ross Stores Inc. Represented defendant in class action lawsuit involving the Fair and Accurate Credit Transaction Act.
CGI-AMS v. Fireman’s Fund Insurance Company. Represented plaintiff in breach of contract, fraud and unfair competition arbitration matter resulting from non-payment of fees in an IT outsourcing dispute. The case concluded with a confidential settlement.
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, but never used by Vascor. Settled the original claim for less than nuisance value.
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.