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IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

FORUM US, INC.

Plaintiff,

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CIVIL ACTION NO. 6:20-cv-00150

ODESSA SEPARATOR, INC.

 Defendant.

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JURY TRIAL DEMANDED

PLAINTIFF FORUM US, INC.’S ORIGINAL COMPLAINT

Plaintiff Forum US, Inc. (collectively, “Plaintiff” or “Forum”) complains and alleges as 

follows against Defendant Odessa Separator, Inc. (“Defendant” or “OSI”):

I. PARTIES

1. Plaintiff Forum US, Inc. (“Forum”) is a corporation organized under the laws of 

the State of Delaware with its principal place of business at 10344 Sam Houston Park Dr., Suite 

300, Houston, Texas 77064-4666.

2. Defendant Odessa Separator, Inc. is a Texas corporation, created and existing under 

and by virtue of the laws of Texas and registered to do business in the State of Texas. Defendant 

OSI may be served through its Texas registered agent for service of process: Cavin B. Frost, c/o 

Odessa Separator Inc., 1612 S Viceroy Ave, Odessa, Texas 79763.

II. JURISDICTION AND VENUE

3. This Complaint includes claims for patent infringement arising under the patent 

laws of the United States, Title 35 of the United States Code. This Court has subject matter 

jurisdiction pursuant to 28 U.S.C. § 1338.
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4. Defendant OSI is subject to personal jurisdiction due to its contacts with the State 

of Texas, and in particular with the Western District of Texas. OSI regularly transacts business 

within this district, including at its headquarters at 1001 Pearl St., Odessa, Texas 79763.

5. Defendant OSI has committed acts of infringement in this district, including but not 

limited to manufacturing, selling and offering to sell infringing products in this district.

6. Venue is proper pursuant to 28 U.S.C. §§1391(b)-(c) and 28 U.S.C. § 1400(b).

III. FORUM’S REVOLUTIONARY SANDGUARDTM TECHNOLOGY

7. Forum is a provider of well services and products that enhance the abilities of 

artificial lift systems in the oil and gas industry, such as downhole pumps. One such product is 

marketed as the SandGuardTM, a tool that revolutionized sand management for wells using 

downhole pumps. 

8. Prior to the invention of the SandGuardTM technology, sand buildup was a serious 

problem for operators and service providers in shale formations. Shale wells are primary 

candidates for multi-zone fracking, which is the process of high-pressure injection of “fracking 

fluid” into multiple sections or zones of a well. This creates cracks in the formation that make it 

easier for the oil in the formation to escape from the fracked production zones. The fracking fluid 

contains sand or other solid particles called “proppants,” which quite literally prop the fractures in 

the formation open. While most wells include some amounts of proppant, shale wells include 

significant amounts of injected proppant due to the number of producing zones in their long lateral 

sections. Injected sand can create major problems for a downhole pump during the production 

phase of a shale well, as explained in reference to Figures 1A to 1C below.
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 FIG. 1A FIG. 1B FIG. 1C

 (Normal Pumping) (Pump Shutdown) (Pump Restart)

9. As shown in Figure 1A, during the production phase a downhole pump is used to 

pump fluid out of a well through production tubing. The pump creates enough pressure to carry 

the fluid and solid particles to the surface, where the wellhead and other surface equipment resides. 

In a perfect world, the downhole pump would not shut down until production of fluids from the

well is complete. In the less-than-perfect real world, downhole pumps shut down several times 

over the life of a well for any number of reasons. For example, an electrical power outage (storms 

or downed power lines) is one possible reason a pump may shut down. 

10. As shown in Figure 1B, when a shutdown occurs the fluid and solid particles (e.g., 

proppant injected during the fracking phase) that are in the production tubular begin to flow 

downwardly by gravity towards the pump, until the fluid level equalizes. When the fluid stops 

flowing, the solid particles in the fluid continue to flow downwardly by gravity through the fluid
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toward the pump. These particles begin to accumulate on or in the pump, building up until they 

form a plug. 

11. As shown in Figure 1C, when the pump starts up again it operates at higher

flowrate and lower pressure as it attempts to clear the solid plug that has formed. Sometimes, the 

pump can clear the plug and normal operations resume for a time. However, the burden of clearing 

the plug puts unwanted strain on the pump, which may greatly reduce the lifespan of the pump. 

Other times, the pump is unable to clear the plug and the pump fails.

12. If the pump fails to clear the plug, the remedial costs can be enormous. A cost that 

will always occur is the cost of having to stop production to address the plug, i.e., lost production 

time. Additionally, there is the added cost of running fishing tools down to flush out the plug, 

removing a failed pump, and/or buying and installing a new pump. All these scenarios have the 

added expense associated with production downtime, such as having to physically dispatch 

employees and heavy-duty equipment to the well site to actually fix the problem(s). In the event 

of a pump failure, the cost of replacing the pump can run into the hundreds of thousands of dollars

when all costs are considered. For these reasons, well operators consider sand plugging a serious 

problem that they desperately try to avoid. 

13. Forum’s SandGuardTM solves the sand plug problems described above. As shown 

in Figure 2 below, the SandGuardTM is assembled into the production string of a well, above a 

pump. The SandGuardTM has (1) a body in the form of an outer tubing or housing; (2) an upper 

and lower opening; (3) a first flow path in a vented inner tubular; (4) a second flow path in an 

annular space around the inner tubular; and (5) a flow diverter. 
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 FIG. 2

The operation of the SandGuard is explained in reference to Figures 3A to 3C below. 
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 FIG. 3A FIG. 3B FIG. 3C

 (Normal Pumping) (Pump Shutdown) (Pump Restart)

14. During normal pumping operation (Figure 3A), fluid and entrained sand flow 

upwardly into a lower opening of the SandGuard. The upward flow then splits into two flow paths. 

The first flow path is through the inner tubular with a flow diverter (in the form of a ball valve) at 

the top. The second flow path is through the annular space surrounding the inner tubular. 

15. When the pump shuts down (Figure 3B), the fluid and entrained solids begin to 

flow downwardly through the production tubing by gravity. The solids are diverted into the second 

flow path by the flow diverter, which closes when the pump is shut down because of the absence 
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of upward flow. This prevents solids from collecting in the first flow path and on the pump, and 

instead allows them to collect in the second flow path. The vents or slots in the inner tubular help

filter the sand by preventing the sand from entering the first flow path from the second flow path

and by causing the sand to collect in the annular space.

16. When the pump restarts (Figure 3C), the upward flow through the first flow path 

induces flow in the second flow path through the small vents in the inner tubular. This induced 

flow, as well as the flow out of the top of the first flow path around the diverter, helps progressively 

carry solid particles out of the second flow path and out of the top of the tool. In this way, the 

SandGuardTM prevents solids from collecting on the downhole pump and ingenuously allows for 

self-cleaning so that the SandGuard can be used for an unlimited number of shutdowns. 

17. The SandGuardTM is covered by several United States Patents, which are discussed 

below.

IV. FORUM’S PATENTS

18. United States Patent No. 9,441,435 (“the ’435 Patent”) entitled “Downhole 

Apparatus and Method” issued on September 13, 2016 after fair and full examination by the United 

States Patent and Trademark Office (“Patent Office”). A true and correct copy of the ’435 Patent 

is attached hereto as Exhibit A. 

19. United States Patent No. 10,132,151 (“the ’151 Patent”) entitled “Downhole 

Apparatus and Method” issued on November 20, 2018 after fair and full examination by the Patent 

Office. A true and correct copy of the ’151 Patent is attached hereto as Exhibit B.

20. United States Patent No. 10,132,152 (“the ’152 Patent”) entitled “Downhole 

Apparatus and Method” issued on November 20, 2018 after fair and full examination by the Patent 

Office. A true and correct copy of the ’152 Patent is attached hereto as Exhibit C.
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21. Forum is the sole owner of the ’435, ’151 and ’152 Patents (collectively, “Patentsin-Suit”). 

22. No other entity is licensed under the Patents-in-Suit, which means Forum is the 

only entity in the United States with the right to make, use, sell/rent, offer for sale/rent, or import 

any product, or to practice any method, embodying the inventions of the Patents-in-Suit.

23. The structure and use of the SandGuardTM is covered by claims in each of the 

Patents-in-Suit.

24. At all relevant times, Forum has marked the SandGuardTM pursuant to 35 U.S.C. §

287.

V. DEFENDANT OSI’S INFRINGEMENT

25. Defendant OSI manufactures, uses, sells and offers for sale a product line it calls

the ESP Sand LiftTM (hereinafter “Accused Product”), including but not limited to at least the 

Series 350, Series 400, Series 450 and Series 550. As of February 19, 2020, the Accused Product 

was being prominently advertised as a “New Product” on the homepage of OSI’s website 

(http://www.odessaseparator.com), as shown below. A true and correct copy of that page as 

publicly available on February 19, 2020 is attached hereto as Exhibit D.
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26. As of February 19, 2020, the OSI website included a product page specific to the 

Accused Product (https://www.odessaseparator.com/esp-sand-lift), which purports to show its 

structure and step-by-step operation. A true and correct copy of that page as publicly available on 

February 19, 2020 is attached hereto as Exhibit E. That same product page provides a download 

link to a marketing brochure for the Accused Product, which also depicts its purported structure 

and step-by-step operation. A true and correct copy of that marketing brochure downloaded on 
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February 19, 2020 is attached hereto as Exhibit F. The step-by-step depiction from the webpage 

has been reproduced below:

 (A) (B) (C) (D) (E) (F) (G)

FIG. 4
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27. The Accused Product is adapted to prevent downward flowing sand from plugging 

a pump when the pump is shut down and allow for self-cleaning upon pump restart. 

28. The Accused Product accomplishes this by redirecting downward flowing solid 

particles, such as sand, into a second flow path (or annular space), as shown in Figure 4(A)-(C). 

The collected solids are isolated from the pump, which is beneath the Accused Product, thereby 

preventing the solids from plugging or otherwise substantially impeding the pump upon restart.

29. As shown in Figure 4(D)-(G), when the pump starts up again, the upward flow of 

fluid through a first flow path (or inner tubular) induces flow in the second flow path (or annular 

space) via vents in the inner tubular wall, which help carry the collected solid particles out of the

second flow path. This allows the tool to self-clean so that it can collect solids during the next 

pump shutdown. 

30. The structure and operation of the Accused Product results in infringement of each 

of the Patents-in-Suit. As non-limiting examples: (A) OSI infringes claims 1 and 18 of the ’435 

Patent as illustrated in Exhibit G; (B) OSI infringes claims 1 and 37 of the ’151 Patent as illustrated 

in Exhibit H; (C) OSI infringes claims 1 and 29 of the ‘152 Patent, as illustrated in Exhibit I.

VI. CAUSES OF ACTION

COUNT 1

(INFRINGEMENT OF U.S. PATENT NO. 9,441,435)

31. Forum re-alleges the facts recited in Paragraphs 1 through 30, inclusive, as if fully 

set forth herein.

32. The ’435 Patent is valid and is presumed valid under 35 U.S.C. § 282. 

33. OSI is not licensed under the ’435 Patent.
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34. OSI infringes, and has infringed, literally or under the doctrine of equivalents, one 

or more claims of the ’435 Patent by importing, making, using, offering to sell/rent and/or 

selling/renting the Accused Products. 

35. Forum is suffering irreparable harm from OSI’s infringement of the ‘435 Patent. 

Forum has no adequate remedy at law and is entitled to an injunction against OSI’s continuing 

infringement of the ’435 Patent.

36. Forum has suffered, and will continue to suffer, monetary damages as a result of 

OSI’s infringement of the ’435 Patent. Each sale or rental of the Accused Product displaces

Forum’s sales of its patented SandGuardTM and, therefore, Forum is entitled to lost profits or at 

minimum a reasonable royalty.

COUNT 2

(INFRINGEMENT OF U.S. PATENT NO. 10,132,151)

37. Forum re-alleges the facts recited in Paragraphs 1 through 36, inclusive, as if fully 

set forth herein.

38. The ’151 Patent is valid and is presumed valid under 35 U.S.C. § 282. 

39. OSI is not licensed under the ’151 Patent.

40. OSI infringes, and has infringed, literally or under the doctrine of equivalents, one 

or more claims of the ’151 Patent by importing, making, using, offering to sell/rent and/or 

selling/renting the Accused Products. 

41. Forum is suffering irreparable harm from OSI’s infringement of the ’151 Patent. 

Forum has no adequate remedy at law and is entitled to an injunction against OSI’s continuing 

infringement of the ’151 Patent.

42. Forum has suffered, and will continue to suffer, monetary damages as a result of 

OSI’s infringement of the ’151 Patent. Each sale or rental of the Accused Product displaces 
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Forum’s sales of its patented SandGuardTM and, therefore, Forum is entitled to lost profits or at 

minimum a reasonable royalty.

COUNT 3

(INFRINGEMENT OF U.S. PATENT NO. 10,132,152)

43. Forum re-alleges the facts recited in Paragraphs 1 through 42, inclusive, as if fully 

set forth herein.

44. The ’152 Patent is valid and is presumed valid under 35 U.S.C. § 282. 

45. OSI is not licensed under the ’152 Patent.

46. OSI infringes, and has infringed, literally or under the doctrine of equivalents, one 

or more claims of the ’152 Patent by importing, making, using, offering to sell/rent and/or 

selling/renting the Accused Products. 

47. Forum is suffering irreparable harm from OSI’s infringement of the ‘152 Patent. 

Forum has no adequate remedy at law and is entitled to an injunction against OSI’s continuing 

infringement of the ’152 Patent.

48. Forum has suffered, and will continue to suffer, monetary damages as a result of 

OSI’s infringement of the ’152 Patent. Each sale or rental of the Accused Product displaces 

Forum’s sales of its patented SandGuardTM and, therefore, Forum is entitled to lost profits or at 

minimum a reasonable royalty.

VII. JURY DEMAND

49. Forum asserts its right under the Seventh Amendment to the U.S. Constitution and 

demands, in accordance with Federal Rule of Civil Procedure 38, a trial by jury on all issues so 

triable. 
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PRAYER FOR RELIEF

Forum prays for the following relief:

a. A judgment that Defendant OSI has infringed all Patents-in-Suit under all 

applicable provisions of Title 35, United States Code;

b. An award of damages adequate to compensate Forum for OSI’s infringement 

and in no event less than a reasonable royalty, together with prejudgment 

interest; 

c. A permanent injunction prohibiting further infringement of the Patents-in-Suit; 

d. Such other relief as this Court or a jury may deem proper and just, including 

but not limited to a finding of exceptional case or willful infringement should 

the evidence ultimately support such a finding.

February 26, 2020 Respectfully submitted,

/s/ William C. Slusser

William C. Slusser

Attorney-in-Charge

Texas Bar No. 18514500

Norton, Rose, Fulbright US LLP

Fulbright Tower

1301 McKinney Street, Suite 5100 

Houston, TX 77010-3095

Telephone: (713) 651-5500

Facsimile: (713) 651-5246

bill.slusser@nortonrosefulbright.com

J. David Cabello

Texas Bar No. 03574500

Stephen D. Zinda

Texas Bar No. 24084147

Cabello Hall Zinda, PLLC

801 Travis Street, Suite 1610

Houston, TX 77002
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Telephone: (832) 631-9990

Facsimile: (832) 631-9991

David@CHZFirm.com

Stephen@CHZFirm.com

ATTORNEYS FOR PLAINTIFF 

FORUM US, INC.