Forum Energy Technologies General Counsel John Ivascu remembers the moment outside counsel from Yetter Coleman, whom he had hired to defend against patent infringement claims, let him know they had found something that would likely change the outcome of the case.
“In this case it was a little bit unique because we had a control order in place, so there was a pretty significant limitation on what I was permitted to see, hear or know about,” he told The Texas Lawbook in a recent interview. “It was fairly early in the case that we discovered it … and it really kind of changed the path of the case.”
A sales brochure from the 1990s detailing the chemistry used to make a type of tubing used in downhole drilling was the proof needed to show that Forum’s wholly-owned subsidiary, Global Tubing, wasn’t liable for infringing the patents of competitor Tenaris Coiled Tubes. Southwestern Pipe Inc. had produced the brochure for a product called CYMAX 100. It had been hidden from the U.S. Patent and Trademark Office when Tenaris was applying for the patents it was now trying to enforce against Global Tubing.
“When I found out I thought, ‘No way — that can’t be true,’” Ivascu said of the unearthed brochure. “And then you dig more and you think, ‘This is incredible.’”
The hiding of the brochure, Ivascu and Yetter Coleman argued, constituted inequitable conduct and rendered the patents unenforceable.
U.S. District Judge Keith P. Ellison agreed and granted Global Tubing’s motion for summary judgment, ending the suit on March 17, 2023. He wrote that “rarely do courts come across such stark evidence of the intent fork of inequitable conduct.” He held the three patents asserted by Tenaris were unenforceable.
“I credit Yetter Coleman for just being thorough,” Ivascu said. “It’s one of those things where, in the discovery process, it’s something that could easily be missed. But they found it and were able to take a step back immediately and really think through what does this mean.”
Ivascu said the discovery also reaffirmed for him the importance of having a strong partnership with outside counsel.
“You have to really have complete and utter trust in them and know that they’re treating the case just as you would be treating the case,” he said. “Here, it was like their own, and they’ve been amazing partners in this case and really have taken the representation to the highest level.”
Tracy LeRoy, a partner in Yetter Coleman’s Houston office, has worked with Ivascu on various matters for several years. In fact, she called him “one of my very favorite clients.”
“2023 was a banner year for John,” she said. “Not only did he lead a major corporate acquisition for Forum, he also achieved an outstanding litigation result on a true bet-the-business-unit case. It is no exaggeration to say that without John’s persistence in pursuing the Tenaris lawsuit, the impacted Forum business unit would not be around today – and it is a thriving and important part of the company.”
The Association of Corporate Counsel’s Houston Chapter and The Texas Lawbook have named Ivascu, Forum Energy and its outside counsel at Yetter Coleman as one of three finalists for the 2024 Houston Corporate Counsel Award for Business Litigation of the Year.
ACC Houston and The Lawbook will honor the finalists and announce the winners May 15.
Journey to a J.D.
Ivascu grew up in the Detroit suburb of Birmingham, Michigan.
His father — a Serbian immigrant who came to this country with his parents at age 12 and spoke Serbian and Romanian but not English — went to college and later worked his way up from lower-level finance and accounting jobs at Ford Motor Company to eventually become the director of dealership audits for North and South America.
Ivascu said his father is his hero.
“In addition to overcoming the adversity associated with moving to a new country in the late ’50s, he has always exemplified what it means to be a good husband, father, friend and colleague,” Ivascu said. “My dad is willing to stand up for what is right, even if it is unpopular. He is humble and does not seek out praise for his good works. Most of all, he is always there to listen.”
His mother, an elementary school principal, was born in the United States to immigrant parents who made the journey from Romania.
“My mom was one of those who had high expectations for all of us,” Ivascu said of himself and his two sisters, who grew up to become doctors. “But mom was one of the most loving, doting mothers. … She was able to help guide us and really had a vision for us to achieve everything we could achieve. She was always very supportive and education was of the utmost importance.”
Both parents had deep roots in the Romanian Orthodox Church — Ivascu’s paternal grandfather was a priest and his mother’s parents were closely involved with the church as well. Those connections, and his heavy involvement with the church growing up, made Ivascu consider the suggestion that he pursue becoming a priest.
“Although I was drawn to the role a priest plays in counseling and serving others, I ultimately determined it was not my calling,” he said.
But a career in the law was not his second choice, either.
After earning a bachelor’s degree in finance and accounting from the University of Michigan in 1999, Ivascu went to work as a consultant for Arthur Andersen for two years before he realized that the law was what truly interested him.
“Among other clients, the group was hired by law firms to prepare financial valuations and to serve as expert witnesses in the damages phase of litigation cases,” he said. “I enjoyed the finance work, but I found the legal aspects of the case very interesting. This exposure spurred my desire to pursue a legal career.”
So, he left for Brooklyn Law School but carried something very important with him on his journey from Chicago to New York. A senior partner at Arthur Andersen gave him contact information for her father, who was a practicing attorney in New York, and explained he’d be willing to help him navigate his new city.
While he was in school, Ivascu said he realized he had a deep interest in securities law.
“The capital markets fascinated me in particular,” he recalled.
Having honed in on securities law and with one year of law school under his belt, he began looking for a summer clerkship and remembered his former senior partner’s advice to call her father.
“After calling him and getting to know him, he suggested I work for him during the summer as a summer associate,” Ivascu said. “I did not know it at the time, but he was a former prosecutor with the U.S. Securities and Exchange Commission.”
That connection led to an introduction with Roberta Karmel, the first female commissioner of the SEC. At the time, she was a professor at Brooklyn Law School and needed a writing assistant.
Ivascu filled the role.
“Through that work, Professor Karmel mentored me and was a driving force in me pursuing a position with the SEC,” he said.
During the summer of his second year at law school, he spent the days working at the SEC, supporting senior trial lawyers on their active litigation. At night he worked for Karmel.
He graduated from Brooklyn Law School in 2004 and joined the SEC in New York that September as an attorney in the division of enforcement.
A V&E Love Story
After his stint with the government, in January 2006, Ivascu was hired to work in the New York office of Vinson & Elkins as an associate in its capital markets, mergers and acquisitions, corporate governance and bankruptcy practice group.
In September of that year, an associate from the firm’s Houston office made a trip to New York, where she was hoping to transfer. The associate, Tara Collins, had wanted to move to New York for years, but the timing hadn’t worked out.
“They told her you’ve got to meet associates and find out what you think of them,” Ivascu recalled. “They told us there’s an associate coming and we want you to meet her and see what you think. So, they kind of asked me to meet with her.”
Ivascu, a University of Michigan graduate, had maintained a healthy love of college football since his days in Ann Arbor.
Collins, a graduate of Texas A&M University, dutifully rooted for the Aggies but was a fan of college football in general.
That overlapping interest was unique in the big city.
“In New York, college football is just not as big of a deal,” he said.The weekend she was in New York, neither of their alma maters were playing, Ivascu said.
“It’s ironic because it was Ohio State and UT that were playing — both of our rivals,” he said.
Both had planned to watch the game at home separately, but they decided to watch it together instead.
“I joke with people that it took planes, trains, automobiles and boats for me to meet her,” he said, recalling the journey he took from his Long Island beach house into the city to meet up for the game.
Things went well. Collins got the transfer.
“Friendship turned to love, and it made sense for us to move to Texas to start a life together,” he said. “The move was obviously very easy, given V&E’s large presence in Houston.”
The couple, now married, moved to Houston in 2008.
Moving In-House
But Ivascu’s career path was about to take another turn after his work on a project in 2010 for SCF Partners, a private equity group in Houston that owned Forum’s predecessor, Forum Oilfield Technologies, made him consider joining the company.
“I was asked to work on a project where SCF Partners was seeking to combine five of its portfolio companies,” Ivascu said. “Over the course of the transaction, I became increasingly interested in joining FET full time.”
“I was impressed by the company’s culture of integrity, customer service and desire to follow not just the letter of the law but the spirit of the law.”
During that work, he also developed a close relationship with FET’s general counsel, Jim McCulloch.
“He was a mentor, friend and boss all rolled up in one person,” Ivascu said. “The fact that he was there when my kids were baptized says it all.”
For the last 13 years, he’s been at Forum, where he started as assistant general counsel.
“Thanks to Jim, my roles and duties grew year after year,” Ivascu said. “He exposed me to all facets of the job and taught me the importance of understanding the business so that you can counsel your client more effectively. In that time, I am proud of the trust i developed with our board of directors, each of whom is a leader in the energy industry.”
In addition to serving as general counsel for Forum, Ivascu is the company’s executive vice president, chief compliance officer and corporate secretary. He’s also the managing director of Forum B+V Oil Tools GmbH.
“John is a no-ego GC,” LeRoy said, explaining what separates Ivascu from his peers. “For example, I once represented the company in a matter where our mediation went for over 21 hours straight.”
The marathon session started at 8 a.m. and went until after 5 a.m. the next day.
“John stayed awake with the team all night in our offices, negotiating the resolution and sticking well past a reasonable hour to get the deal done,” LeRoy said. “He obtained a remarkable result, a substantial cash payment and an agreed injunction. Most GCs would have called an impasse hours before, but John believed in the company’s position and our negotiating strength. John ensures that his outside counsel understand the Forum ethos and culture, and works to ensure strong relationships with the executives and key outside counsel.”
Since 2011, the company has completed an IPO and its leaders have closed more than 25 acquisitions, navigated the energy downturn and took the pandemic as an opportunity to restructure the company’s balance sheet.
“While John partners with outside counsel, the breadth of his responsibilities and depth of legal knowledge is truly remarkable,” Yetter said.
Tull Florey, a transactional partner in Gibson Dunn’s Houston office, has worked with Ivascu in the past and credited his unique mix of skills when asked what makes Ivascu a good lawyer and general counsel, including his ability to delegate tasks and be highly efficient.
“John is a very thorough and thoughtful lawyer, but also commercial,” Florey said. “He focuses on the important business issues in any given matter. He understands his executives’ priorities. He develops good relationships with his outside counsel and seeks advice at all appropriate times.”
Florey said he’s seen Ivascu excel under pressure.
“Recently, John led the team on a significant acquisition for the company when it acquired Variperm in Canada,” he said. “There were very complicated financing obstacles, which he managed exceptionally well.”
Amid all those successes, Ivascu said his best day at FET came at the February 2019 meeting of the board of directors.
“At that meeting I was named general counsel and succeeded my mentor,” he said. “It was also particularly meaningful because it showed [then-President and CEO] Cris Gaut and the board of directors valued my advice and trusted me.”
Beating Back a Competitor’s Claims
Paul Yetter of Yetter Coleman, who was outside counsel on the Tenaris case, praised Ivascu’s “steadfast pursuit of critical evidence that Tenaris had engaged in fraud on the Patent Office” in nominating him for the Business Litigation of the Year award.
“Victory would not have been achievable had it not been for John’s incredible collaboration with Yetter Coleman in achieving this result,” Yetter said. “Based on the evidence that John’s team developed during discovery, including that a Tenaris inventor intended to deceive the Patent Office, the court issued an important discovery ruling in March 2021. In it, the court applied the crime-fraud exception to evidence related to CYMAX over which Tenaris claimed attorney-client privilege.”
Global filed suit on Oct. 30, 2017, seeking a judicial declaration that its products didn’t infringe patents held by Tenaris.
For Ivascu, hiring outside counsel isn’t something that can be reduced to a formula.
“Obviously, they need to be my partner and share my desire to stand up for what is right,” he said. “I always say that I want to know I can rely on our outside counsel when we need them, but we recognize we all have families and other people in our lives that rely on us. Life as a lawyer is stressful, so we need to work together.”
Hiring Yetter Coleman in this case was an easy decision.
“Paul Yetter has a reputation for being able to take complex issues and communicate them in an easy-to-understand way,” Ivascu said. “His team is dedicated to their clients and always does the right thing. They don’t cut corners, are thorough and have the highest level of intelligence. Plain and simple, they are the best of the best.”
The patents covered a type of coiled tubing used in downhole drilling called “quench and temper,” which refers to a process that yields more durable, strong and safe tubing.
Southwestern Pipe was the first company to produce the quench and temper tubing, and it touted the benefits in a sales brochure. Specifically, on page 30 of the brochure, Southwestern detailed the chemistry used to create the CYMAX 100 product.
But CYMAX 100 was not a commercial success and Southwestern left the coiled tubing market, according to court documents.
In 2010, Tenaris found a CYMAX furnace in a facility it owned, and in February 2014, it filed an application for one of the three patents at issue in the litigation. Not long after that, Tenaris discovered the sales brochure.
“The brochure was distributed to those at Tenaris working on the ‘256 patent,” Judge Ellison wrote in his March 2023 order. “One member of the Tenaris team wrote to the lead inventor, Martin Valdez, ‘look at the chemistries (Page 30 for instance for CYMAX 100). This is essentially our chemistry.’”
Valdez sent the brochure to Tenaris’ in-house counsel, who forwarded it to outside patent prosecution counsel.
But no one provided the brochure to the USPTO while the patent application was pending.
The patent was issued on Oct. 31, 2017.
“Because inequitable conduct is the atomic bomb of patent law, the doctrine requires a showing of both intent and materiality,” Judge Ellison explained in the 10-page order that would bring an end to the five-year dispute.
He noted that when Tenaris filed applications for two related “children” patents, it submitted the CYMAX brochure but omitted page 30.
“In preparation for his declaration, Valdez wrote to prosecuting counsel about the CYMAX brochure stating, ‘In page 30 of the CYMAX.pdf doc you can see the spec of the CYMAX 100. … I am not sure it is a good idea to disclose this document.’ After Valdez expressed this concern, the prosecuting attorney did not submit the CYMAX brochure to the examiner,” Judge Ellison wrote. “Rarely do courts come across such stark evidence of the intent fork of inequitable conduct.”
“Moreover, there is no other reasonable inference that can be drawn from Tenaris’s withholding the CYMAX document from the Patent Office, other than intent to deceive.”
Judge Ellison pointed out that none of the attorneys involved in the litigation were implicated in the inequitable conduct.
Tenaris filed notice in April 2023 that it was appealing the ruling to the U.S. Court of Appeals for the Federal Circuit. About a week later, Global Tubing also filed notice that it was cross appealing.
Yetter called Judge Ellison’s ruling “extremely rare” but said it was supported by the “extent and depth of the evidence.”
“The case is now in a very favorable posture in which to defeat Tenaris’s appeal of the final judgment,” Yetter said. “Meanwhile, Forum’s Global Tubing business continues to flourish. John’s dedication to the legal process, leadership through this important litigation and collaboration with outside counsel obtained an outstanding result for his company.”
LeRoy called the lawsuit a bet-the-company case. Ivascu wouldn’t go quite that far, he said.
“But at the same time, it really would have had a very significant impact on Global Tubing and the whole enterprise” had Judge Ellison instead sided with Tenaris, Ivascu said. “I would say it really would have significantly altered the trajectory of the enterprise.”