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Peter E. Mims

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Mims, Peter E.

Biography
Peter's primary area of practice is litigation involving intellectual property, such as patent, trademark, trade secret, and copyright disputes, and disputes concerning covenants not to compete. He also handles litigation involving technology, including chemical and chemical-processing technology, software and computer technology, and oil field technology. He has represented clients in diverse industries, including clients in the chemical, oil and gas services, laboratory equipment, computer hardware, music recording business, and health care industries.

Peter's practice also involves counseling clients in business transactions that involve intellectual property rights, including licensing agreements, product distribution agreements, franchise agreements, non-competition agreements, publishing agreements, and computer hardware and software agreements.


Representative Experience
Patent Litigation
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  • Won two-day bench trial for manufacturer of locking devices in patent infringement case filed by major competitor; Court issued decision finding no infringement either literally or under the doctrine of equivalents
  • Defended laboratory instrumentation company in a patent infringement and false advertising dispute; conducted Markman hearing and obtained summary judgment ruling on literal infringement and case then settled with all claims dismissed
  • Defended oil field services company in patent infringement case brought by major competitor involving tubular threaded goods; obtained summary judgment on ownership, and after reversal on appeal, case settled favorably
Trade Secret and Technical Litigation
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  • Represented valve manufacturer in arbitration of trade secret case; obtained agreed injunction after trial on the merits
  • Represented an insurance brokerage company in an employee raiding/non-solicitation of customers and employees suit against competitor and four former employees; obtained temporary injunction regarding non-solicitation of customers and employees which was affirmed in published opinion as to all but one former employee on appeal
  • Represented a major oil field chemical company in a covenant not to compete dispute involving hiring of nine employees brought by a competitor; obtained ruling that covenants not to compete were invalid under Texas law; remainder of case subsequently settled
Trademark Litigation
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  • Represented valve manufacturer in trade dress and trademark infringement case; obtained preliminary injunction and then settled case on terms similar to preliminary injunction
  • Represented food manufacturer in trademark opposition and declaratory judgment lawsuit regarding trademark infringement threatened by senior user; obtained dismissal of opposition proceeding and favorable settlement of litigation and dispute after motion to dismiss based on jurisdiction was denied
  • Represented food manufacturer in advertising dispute before National Advertising Division of Better Business Bureau
Copyright Infringement Litigation
  • Represented major record label in licensing dispute involving Tejano music; obtained partial summary judgment on majority of causes of action and case settled favorably after mediation
  • Represented major record label in copyright infringement case; case settled after filing of motion for summary judgment
  • Represented cable television company in copyright infringement suit; plaintiff dismissed suit prior to trial
Non Litigation Matters
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  • Represented major oil company with respect to all intellectual property matters in $3.6 billion transaction to acquire oil and gas properties dependent upon use of CO2 technology, including negotiating a license agreement of intellectual property rights related to CO2 technology
  • Represented corporation in connection with negotiation of primary license agreement with university for all intellectual property rights regarding carbon nanotechnology
  • Represented energy trading company in sale of business with respect to intellectual property matters that included complex system of owned and licensed software programs
Prior results do not guarantee a similar outcome.

Education and Professional Background
  • University of Texas School of Law, J.D., 1985 (Board of Editors, Texas Law Review)
  • Rice University, M.Ch.E., 1979
  • Rice University, B.S. Ch.E., 1978
  • Chemical Engineer, Rohm and Haas, Texas, Inc.
  • Admitted to practice: Texas, 1985; United States Patent and Trademark Office; Texas state courts; various federal courts
Professional Recognition
  • Chambers USA: America's Leading Business Lawyers in intellectual property law, 2010 - 2011
  • Who's Who Legal: Texas in trademark law, 2007 and 2008
  • The Legal 500 US: Volume II (Intellectual Property, Technology, Media & Telecoms) in patent litigation: energy-sector, 2007
Activities and Affiliations
  • Member: American Intellectual Property Law Association; Vice-Chair of Special Committee on Mergers and Acquisitions (AIPLA); Intellectual Property Law Section, State Bar of Texas; Houston Intellectual Property Association
Publications and Presentations
  • Author of article on trademark law for Texas Law Review
  • Publications and/or speeches on a variety of intellectual property topics, including patent litigation, ownership of inventions, remedies in trademark cases, intellectual property issues in mergers and acquisitions, and non-competition agreements.
  • "Ownership of Laboratory Discoveries and Work Product," Understanding Biotechnology Law (co-author)


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Peter E. Mims
Partner
First City Tower
1001 Fannin Street
Suite 2500
Houston, TX 77002-6760

Tel  +1.713.758.2732
Fax  +1.713.615.5703
pmims@velaw.com

Industries/Practices
Biotechnology and Pharmaceutical

Energy

Intellectual Property Counseling

Intellectual Property Licensing

Intellectual Property Litigation

Intellectual Property Prosecution

Outsourcing

Technology