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Peter E. Mims

Peter E. Mims Partner, Intellectual Property

Peter’s primary area of practice is litigation involving intellectual property, such as patent, trademark, trade secret, 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 oilfield equipment and services, chemical processing, liquid crystal displays, laboratory equipment, computer hardware and software, music recording business, and health care.

Peter’s practice also involves representing clients in business transactions that involve intellectual property rights, including merger and acquisition agreements, license agreements, computer hardware and software agreements, product distribution agreements, and noncompetition agreements.

Experience Highlights

  • (Fed. Circ.); (S.D. Tex.) — Defended AKM Enterprises, Inc. d/b/a Moblize, Inc., a provider of real-time data solutions for oil well monitoring and analysis, in a patent infringement case filed by a competitor seeking in excess of $200M and a preliminary injunction; obtained dismissal with prejudice and invalidity of the asserted patent based on unpatentable subject matter, which was affirmed on appeal
  • (D. Mass.) — Won two-day bench trial for a 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
  • (S.D. Tex.) — Defended a laboratory instrumentation company in a patent infringement and false advertising dispute; conducted Markman hearing and obtained summary judgment ruling on literal infringement; case then settled with all claims dismissed
  • (W.D. Tex.); (Fed.Cir.) — Defended a major electronics company in patent infringement suit in connection with printed circuit board technology; obtained summary judgment invalidating all claims of the patent in suit; case settled during appeal
  • (N.D. Tex.) —  Defended a manufacturer of skin care products in trademark infringement and dilution case; case settled and claims dismissed after mediation
  • (S.D. Tex.) — Represented a valve manufacturer in trade dress and trademark infringement case; obtained preliminary injunction and then settled case on terms similar to preliminary injunction
  • (W.D. Tenn.) — Represented a food manufacturer in trademark opposition and declaratory judgment lawsuit regarding trademark infringement threatened by senior user; obtained dismissal of opposition proceeding and settlement of litigation and dispute after motion to dismiss based on jurisdiction was denied
  • Dyno Nobel Inc. in a intellectual property process license agreement related to the development of an $850 million anhydrous ammonia plant  
  • Iracore International in intellectual property efforts related to the sale of the company, a Lime Rock Partners portfolio company and developer, manufacturer, and applicator of elastomeric products for pipelines and other equipment used in demanding industrial applications

Patent Litigation

  • (S.D. Tex.) — Represented an international seismic survey company in patent infringement case; mediated the case successfully obtaining licenses for all of the surveying vessels of client
  • (S.D. Tex.) — Defended an oilfield services company in patent infringement case brought by major competitor involving tubular threaded goods; obtained summary judgment on joint ownership issue and, after reversal on appeal, case settled favorably
  • (S.D. Tex.) — Defended an oilfield services company in patent infringement case involving two oil field chemical products; case settled on acceptable terms during first day of trial
  • (S.D. Tex.) — Represented a record company in inventorship and ownership dispute involving patents involving compact discs; obtained summary judgment on ownership of patents and inventorship of patents after evidentiary hearing
  • (E.D. Tex.) — Represented a bottled water company and retailer in patent infringement case; negotiated settlement of case prior to discovery

Trade Secrets & Unfair Competition

  • (AAA Arbitration − Utah) — Represented a valve manufacturer in arbitration of trade secret case; obtained agreed injunction after arbitration hearing on the merits
  • (Tex. Dist. − Harris Cnty.); (Tex. App. − Houston [1st. Dist.]) — 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
  • (Tex. Dist. − Harris Cnty.) — Represented a major oilfield 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
  • (Tex. Dist. − Harris Cnty.); (Tex. App. − Houston [14th Dist.]) — Represented a major oil company in trade secrets dispute involving drilling rig technology; case dismissed based on forum selection clause; case affirmed on appeal
  • (Tex. Dist. − Harris Cnty.) — Represented an oilfield services company in covenant not to compete/trade secrets case; defeated request for injunction against enforcement of covenant not to compete after evidentiary hearing, and case settled on terms acceptable to client
  • (Tex. Dist. − Harris Cnty.) — Represented a chemist sued by former employee based on a covenant not to compete and trade secrets misappropriation; negotiated prompt settlement allowing chemist to work for competitor
  • (Tex. Dist. − Harris Cnty.) — Represented a railroad car storage business and employee in trade secret and breach of contract dispute; defeated temporary injunction after evidentiary hearing; case settled on favorable terms

Trademark Litigation & False Advertising

  • Represented a food manufacturer in false advertising dispute before National Advertising Division of Better Business Bureau
  • (N.D. Tex.) — Represented a pump manufacturer in cybersquatting dispute; obtained favorable settlement that included transfer of title to domain names
  • (S.D. Tex.) — Represented an oilfield equipment company in trademark infringement; obtained agreed injunction by way of settlement after completion of expert discovery
  • (Tex. Dist. − Harris Cnty.) — Represented a major retailer in trademark infringement case; obtained favorable settlement in which client obtained assignment of all trademark rights of small senior user in market
  • (Tex. Dist. − Harris Cnty.); (Tex.) — Represented rental car trademark licensees in dispute with licensor; case settled after trial during appeal to Texas Supreme Court
  • (E.D. Tex.) — Represented defendant equipment manufacturer in false advertising, trademark infringement, and trade secrets case; case settled after granting of motion to transfer venue

Copyright Litigation

  • (S.D. Tex.) — Represented a pump manufacturer in copyright infringement case against competitor who used copyrighted images on defendant’s website; obtained summary judgment and final judgment of statutory damages and attorney’s fees
  • (Tex. Dist. − Harris Cnty.) — Represented a major record label in copyright licensing dispute involving Tejano music; obtained partial summary judgment on majority of state law causes of action, and case settled favorably after mediation
  • (S.D. Tex.) — Represented a major record label in copyright infringement case involving Tejano music recordings; case settled after filing of motion for summary judgment
  • (S.D. Tex.) — Represented a cable television company in copyright infringement suit; plaintiff dismissed suit prior to trial

IP in Mergers & Acquisitions

  • Represented a 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
  • An energy trading company in intellectual property efforts related to the sale of the business reportedly valued at nearly $1 billion, including a complex system of owned and licensed software programs
  • A food company with respect to intellectual property in the $110 million acquisition of food brands in Mexico
  • Represented a major chemical company on intellectual property matters in the formation of a joint venture with another major chemical company regarding their PVC and VCM businesses, including the negotiation of technology and toll processing agreements
  • Represented a biotechnology company in biotechnology licensing agreements and acquisition of biotechnology intellectual property assets from bankrupt estate
  • Represented an oil field equipment manufacturer in acquisition of flow control business with respect to intellectual property issues
  • Mitsui & Co., Ltd. in intellectual property efforts and due diligence related to its agreement with DuPont to purchase DuPont’s global Kocide and ManKocide copper fungicide assets, which involved a two-stage closing and supply agreement with seller

Licensing Agreements

  • Represented and counseled an international mining conglomerate in licensing of coal pyrolysis technology and negotiation of plant construction and development agreements
  • Represented Velocys in negotiating license and equipment agreements regarding microchannel process technology in the energy and chemical businesses
  • Represented an ophthalmologist in licensing of intellectual property rights in intraocular lens technology to manufacturer
  • Represented client in negotiating intellectual property licensing agreements with respect to development and marketing of home security management systems
  • Represented an e-commerce energy and petrochemical business-to-business exchange owned by major oil companies in drafting and negotiation of software licensing agreements and software development agreements to secure key value-added software products, membership agreements, and privacy issues
  • Represented a biotechnology company regarding settlement agreement related to dispute involving supply agreement for delivery system for growth hormone technologies
  • Represented a corporation in connection with negotiation of primary license agreement with university for all intellectual property rights regarding carbon nanotechnology
  • Pet food manufacturer with respect to an outsourcing agreement with a third party to provide purchase order and accounts payable services

Technology

  • (Tex. Dist. − Harris Cnty.) — Represented purchaser of computer software system in Deceptive Trade Practices matter; obtained final judgment for purchase amount and attorneys fees against seller of software
  • Represented a major chemical company and underwriters in subrogation case involving contaminated feedstock dispute with supplier; favorable settlement reached prior to arbitration hearing
  • (Tex. Dist. − Harris Cnty.) — Represented a cellular telephone company in patent licensing and ownership of technology dispute; obtained $11 million dollar jury verdict and defeated all counterclaims
  • (Tex. Dist. − Harris Cnty.) — Represented a real estate developer in construction dispute with performance bonding company; obtained substantial judgment, which was affirmed in published opinion on appeal
  • (Tex. Dist. − Harris Cnty.) — Represented a construction company in indemnity action brought by surety; take-nothing judgment against surety and recovery of attorney’s fees affirmed on appeal against surety in published opinion


Contact Details

Houston

T +1.713.758.2732
F +1.713.615.5703
pmims@velaw.com
1001 Fannin Street
Suite 2500
Houston, TX 77002
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Peter's Practices

  • 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
  • Admitted to practice: Texas; United States Patent and Trademark Office; Texas state courts; various federal courts
  • Chemical Engineer, Rohm and Haas, Texas, Inc.
  • Chambers USA, Intellectual Property (Texas), 2010−2018
  • The Legal 500 US: Volume II (Intellectual Property, Technology, Media & Telecoms), Patent Litigation: Energy-Sector, 2007
  • The Best Lawyers in America© (Woodward/White, Inc.), Litigation−Intellectual Property and Patent Law, 2017−2019
  • IAM Patent 1000: The World’s Leading Patent Practitioners, Patent Litigation (Texas), 2013−2017
  • IAM Patent 1000: The World’s Leading Patent Practitioners, Transactions (Texas), 2014−2017 (Highly Recommended Ranking)
  • IAM Patent 1000: The World’s Leading Patent Practitioners, Licensing (Texas), 2014
  • Managing Intellectual Property, IP Star, 2014−2017
  • Selected to the Texas Super Lawyers list, Super Lawyers (Thomson Reuters), 2012−2018
  • Who's Who Legal (Law Business Research Ltd.), Trademark Law (Texas), 2007 and 2008
  • Member: American Intellectual Property Law Association (past chair of Mergers and Acquisitions Committee); Intellectual Property Law Section, State Bar of Texas; Houston Intellectual Property Association
  • Master: The Honorable Nancy F. Atlas Intellectual Property American Inn of Court