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Peter E. Mims
Peter E. Mims
Of Counsel — Intellectual Property
Of Counsel — Intellectual Property

Peter E. Mims

Peter E. Mims
Houston

1001 Fannin Street
Suite 2500
Houston, TX 77002

Peter E. Mims

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

  • (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

  • (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

  • 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

  • (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

  • 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

  • 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

  • (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 (net) 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

Credentials

  • 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.
  • Chambers USA, Intellectual Property (Texas), 2010-2020
  • The Legal 500 US: Volume II (Intellectual Property, Technology, Media & Telecoms), Patent Litigation: Energy-Sector, 2007
  • The Best Lawyers in America© (BL Rankings, LLC), Litigation−Intellectual Property and Patent Law, 2017−2021
  • 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), 2012−2019
  • 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
  • Texas
  • United States Patent and Trademark Office
  • Texas state courts
  • various federal courts
  • U.S. Court of Appeals for the Fifth Circuit
  • “Trade Secrets Law: The Evolving Landscape for Protecting Innovations,” Vinson & Elkins Intellectual Property CLE Series, Houston, Texas, December 2015 (presenter)
  • “Bankruptcy and Intellectual Property: Issues in Mergers and Acquisitions,” AIPLA 2014 Spring Meeting, May 15, 2014 (presenter)
  • “Intellectual Property Considerations in the Oil Patch,” 3rd Oilfield Services Law Conference, The Center for American and International Law, October 7, 2013 (co-presenter)
  • “Creative Non-Monetary Remedies in Trademark Cases: Getting a Better Return on Equity,” AIPLA Spring Meeting, May 14, 2008 (presenter)
  • 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 noncompetition agreements
  • “Ownership of Laboratory Discoveries and Work Product,” Understanding Biotechnology Law, Chapter 6 (co-author)