NOTE: This disposition is nonprecedential. 

United States Court of Appeals for the Federal Circuit 

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ALEXANDER S. ORENSHTEYN, 

 Plaintiff-Appellant, 

and 

DAVID FINK, TIMOTHY W. JOHNSON, 

and FINK & JOHNSON, 

 Sanctioned Parties-Appellants, 

v. 

CITRIX SYSTEMS, INC., 

 Defendant-Appellee. 

Alexander S. Orenshteyn, of Westborough, Massachusetts, pro se. 

David Fink, of Houston, Texas, for sanctioned parties-appellants. 

Douglas J. Kline, Goodwin Procter, LLP, of Boston, Massachusetts, for 

defendant-appellee. With him on the brief was William A. Meunier. 

Appealed from: United States District Court for the Southern District of Florida 

Judge Adalberto Jordan
 NOTE: This disposition is nonprecedential. 

United States Court of Appeals for the Federal Circuit 

2003-1427, 2008-1378, -1400

ALEXANDER S. ORENSHTEYN, 

Plaintiff-Appellant, 

and 

DAVID FINK, TIMOTHY W. JOHNSON, 

and FINK & JOHNSON, 

Sanctioned Parties-Appellants, 

v. 

CITRIX SYSTEMS, INC., 

Defendant-Appellee. 

 

Appeal from the United States District Court for the Southern District 

of Florida in case no. 02-CV-60478, Judge Adalberto Jordan. 

____________________________ 

DECIDED: July 24, 2009 

____________________________ 

 

Before MAYER, LOURIE, and BRYSON, Circuit Judges. 

LOURIE, Circuit Judge. 

DECISION 

 Alexander Orenshteyn appeals from the decision of the United States District 

Court for the Southern District of Florida granting summary judgment of noninfringement 

of U.S. Patent 5,889,942 (“the ’942 patent”) and U.S Patent 6,393,569 (“the ’569 
patent”). Orenshteyn v. Citrix Sys., Inc., 265 F. Supp. 2d 1323 (S.D. Fl. 2003). 

Orenshteyn also appeals, along with his counsel at the district court, David Fink and 

Timothy Johnson, from the district court’s imposition of sanctions on Orenshteyn, Fink, 

and Johnson and assessment of $755,633.17 in attorney fees and costs against the 

three men, assessed jointly and severally. Orenshteyn v. Citrix Sys., Inc., No. 02-

60478-Civ (S.D. Fla. Jan. 5, 2007) (Dkt. No. 253); Orenshteyn v. Citrix Sys., Inc., 558 F. 

Supp. 2d 1251 (S.D. Fla. 2008). Because the district court correctly granted summary 

judgment as to some of the claims, erred in granting summary judgment of 

noninfringement as to claim 1 of the ’942 patent, and abused its discretion in imposing 

sanctions, we affirm in part, reverse in part and remand. 

BACKGROUND 

 Orenshteyn owns the ’942 patent and the ’569 patent, both of which are entitled 

“Secured System for Accessing Application Services from a Remote Station.” 

Orenstheyn brought suit against Citrix Systems, Inc. (“Citrix”) on April 9, 2002, alleging 

that Citrix infringed “at least claim 1” of the ’942 patent. Two months later, he amended 

his complaint to include the ’569 patent. On March 6, 2003, after the close of discovery, 

Citrix moved for summary judgment of noninfringement and invalidity of the two patents 

at issue. 

 On May 16, 2003, Citrix served Orenshteyn’s counsel, Fink, with a motion for 

sanctions under Rule 11 and a memorandum in support of that motion. The letter 

stated that Citrix intended to file the enclosed motion with the court unless Orenshteyn 

dismissed each of his claims against Citrix by June 6, 2003. Rule 11 requires that a 

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plaintiff be afforded a twenty-one day window in which to withdraw an offending action 

before a motion for sanctions can be filed in a court. Fed. R. Civ. P. 11(c)(2). 

On May 20, 2003, four days after Citrix served Fink with its motion for sanctions, 

the district court granted Citrix’s motion for summary judgment of noninfringement. 

Orenshteyn, 265 F. Supp. 2d at 1324. The court construed the term “controller,” found 

in claim 1 of both the ’942 and ’569 patents, to mean “something other than a general 

purpose CPU.” Id. at 1329-30. Because it was undisputed that the accused Citrix 

products all used general purpose CPUs in executing application program code, the 

court found that “Mr. Orenshteyn ha[d] failed to meet his burden of showing that any of 

the accused Citrix products infringe on his patents.” Id. at 1331. 

 On June 19, 2003, Citrix filed its motion for sanctions under Rule 11 in the district 

court. Simultaneously, Citrix filed a motion for attorney fees and expenses against 

Orenshteyn pursuant to 35 U.S.C. § 285, against Fink and Johnson pursuant to 28 

U.S.C. § 1927, and against Orenshteyn, Fink, and Johnson pursuant to the court’s 

inherent powers. The court granted the motion in part. The court found Orenshteyn 

liable for sanctions under Rule 11 and Fink and Johnson liable under both Rule 11 and 

28 U.S.C. § 1927. Orenshteyn, No. 02-60478-Civ, slip op. at 24. The case was then 

referred to a magistrate judge for a recommendation as to the amount of sanctions. 

The magistrate judge recommended a total award to Citrix in the amount of 

$755,663.17 to be assessed jointly and severally against Orenshteyn, Fink, and 

Johnson. Orenshteyn, 558 F. Supp. 2d at 1264-65. The district court adopted the 

magistrate’s sanction recommendation. Orenshteyn v. Citrix Sys., Inc., No. 02-60478-

Civ, slip op. at 2 (S.D. Fla. Apr. 28, 2008) (Dkt. No. 266). 

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 Orenshteyn timely appealed the court’s decision regarding noninfringement and 

sanctions and Fink and Johnson timely appealed the court’s decision regarding 

sanctions. We consolidated the two appeals. We have jurisdiction under 25 U.S.C. 

§ 1295(a)(1). 

DISCUSSION 

A. Noninfringement of the ’942 and ’569 patents

We review the district court's grant of summary judgment de novo, “applying the 

same criteria used by the district court in the first instance.” Rothe Dev. Corp. v. Dep’t 

of Defense, 545 F.3d 1023, 1035 (Fed. Cir. 2008) (quoting W.H. Scott Constr. Co. v. 

City of Jackson, 199 F.3d 206, 211 (5th Cir. 1999)). Summary judgment is appropriate 

“if the pleadings, the discovery and disclosure materials on file, and any affidavits show 

that there is no genuine issue as to any material fact and that the movant is entitled to 

judgment as a matter of law.” Fed. R. Civ. P. 56(c). 

As a preliminary matter, we agree with the district court that Orenshteyn has 

presented no evidence of infringement of any claim, other than claim 1 of the ’942 

patent. Furthermore, he has presented no evidence of infringement by any of Citrix’s 

products, other than MetaFrame for Windows 1.8. Orenstheyn’s brief opposing 

summary judgment provided a claim chart comparing claim 1 of the ’942 patent to 

MetaFrame for Windows 1.8. No other claims of either patent are compared with any 

Citrix product, and no other Citrix product is compared with any other claim. A note at 

the bottom of the claim chart says, “[a] similar comparison can be made regarding claim 

1 of U.S. Patent No. 6,393,569.” However, simply claiming that such a comparison can 

be made is insufficient for purposes of forestalling summary judgment. We therefore 

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affirm the district court’s grant of summary judgment of noninfringement of all claims 

and all products, except for claim 1 of the ’942 patent and MetaFrame for Windows 1.8. 

What is left for us to determine, therefore, is whether a genuine issue of material fact 

exists as to infringement of claim 1 of the ’942 patent by Citrix’s MetaFrame for 

Windows 1.8 product. 

Claim 1 of the ’942 patent reads as follows: 

1. A secured system for accessing application services from at least one 

application program, comprising: 

at least one client station having low-level application independent logics 

stored therein and at least one controller for controlling said low-level 

application independent logics, said low-level application independent 

logics including a user interface logic, a device control logic for 

controlling devices, a file system logic, and a communication interface 

logic, wherein said file system logic includes a file system capable of 

storing data corresponding to said at least one application program; 

at least one application server having high-level application logic stored in 

a server device for running said at least one application program, said 

server device being coupled to said at least one application server; and 

a low-level interface between said at least one client station and said at 

least one application server for connecting said at least one client 

station to said at least one application server, 

 wherein upon accessing by said at least one client station, said at least 

one application server runs said at least one application program which 

selectively controls said low-level application independent logics for 

controlling devices of said at least one client station and for accessing 

data of said at least one client station, and wherein said at least one 

application server processes said corresponding data from said at 

least one client station on said at least one application program without 

permanently storing said data in a server device coupled to said at 

least one application server. 

(emphasis added). 

As indicated above, the district court construed the term “controller” in Claim 1 “to 

mean something other than a general purpose CPU.” Orenshteyn, 265 F. Supp. 2d at 

1329-30. The court then found that because the ’942 and ’569 patents “use a 

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‘controller,’ which has been construed as something other than a general purpose 

CPU,” while the accused Citrix products “all use a general purpose CPU to execute 

application program code,” Orenshteyn had failed to show infringement. Id. at 1331 

On appeal, Orenshteyn argues that the district court erred in construing the term 

“controller.” Orenshteyn argues that, while the specification of the ’942 patent 

discusses using controllers that are not CPUs in order to lower costs, the specification 

does not limit his claims to non-CPU controllers. Orenshteyn argues that the district 

court correctly recognized that the specification discloses an embodiment in which the 

controller is a CPU, but erred in finding that this embodiment was unclaimed. 

Orenshteyn argues that claim 2 of the ’942 patent and the doctrine of claim 

differentiation require a construction of “controller” that includes CPUs. 

We agree with Orenshteyn that Citrix is not entitled to summary judgment of 

noninfringement of claim 1. The district court granted Citrix’s motion because the 

MetaFrame product uses a CPU, in contrast to its construction of the ’942 patent as 

referring to something other than a CPU. However, as we shall demonstrate, claim 1 of 

the ’942 patent covers products that employ a CPU, and the district court’s grant of 

summary judgment of noninfringement was therefore erroneous. 

Claim 1 of the ’942 patent claims a secured system for accessing application 

services that is made up of a client station connected through an interface with an 

application server. ’942 patent cl. 1. The client station consists of a controller and a 

number of “low-level application independent logics,” such as a user interface logic, a 

file system logic, and a device control logic. Id. The client station accesses the 

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application server, which runs an application program that in turn controls the 

application logics of the client station. Id. 

Claim 2 of the ’942 patent claims the system of claim 1, “wherein said at least 

one client station lacks a general purpose central processing unit to prevent execution 

of application program code on said at least one client station, so as to decrease cost 

and protect said at least one client station.” Id. cl. 2. Claim 2 adds to claim 1 only that 

the “client station lacks a general purpose” CPU. Thus, claim 1, as the parent of 

dependent claim 2, presumably includes the possibility of a client station that possesses 

a general purpose CPU; otherwise claim 2 is identical to claim 1 and therefore 

superfluous. See Xerox Corp v. 3Com Corp., 267 F.3d 1361, 1366 (Fed. Cir. 2001) 

(stating that reading a limitation into a claim that would render two claims superfluous 

“will not do”). 

There can be no doubt, when looking at the specification and comparing claim 2 

to claim 1, that a CPU may be included in the client station of claim 1. The district court, 

in granting summary judgment of noninfringement, found that because Citrix’s “products 

all use a general purpose CPU to execute application program code,” those products 

did not infringe claim 1 of the ’942 patent because that claim required the use of a 

controller, which was construed as “something other than a general purpose CPU.” 

Orenshteyn, 265 F. Supp. 2d at 1329-30. However, as we have demonstrated, 

because claim 2 claims a client station that “lacks a general purpose [CPU] to prevent 

execution of application program code,” claim 1 impliedly may include just such a CPU. 

In support of its decision, the district court noted the portions of the specification 

that seem to indicate a distinction between a “controller” and a general purpose CPU. 

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See id. at 1329; ’942 patent col.6 ll.17-20 (“expensive general purpose processing 

CPUs are preferably replaced with inexpensive but powerful controllers, such as DSP 

chips.”); id. c.1 ll.65-67 – col.2 l.1 (“General purpose computing on the desktop, i.e., 

desktops having a standard OS (such as Windows 95®) and a microprocessor (such as 

the Pentium® chip), has to be replaced by a system which is less expensive . . . .”). 

However, those portions of the specification do not “define” the term controller, as the 

district court held they do. Rather, they suggest that there are inexpensive controllers 

that are not CPUs; they do not indicate that all controllers are distinct from all CPUs. 

Furthermore, another portion of the specification indicates that the invention can, 

in fact, employ a CPU. ’942 patent col.9 ll.48-52 (“It should be understood that general 

purpose computers will also work with the present invention (with little or no 

modifications), such that existing owners of PCs can access any specialized server to 

spawn a selected application, if desired.”). The court explained that portion of the 

specification, which appears to contradict its claim construction, by describing that 

portion as an “unclaimed invention.” Orenshteyn, 265 F. Supp. 2d at 1329. While it is 

true that a specification may contain unclaimed inventions, we have shown that the 

claims in this case indicate that the use of a CPU is, in fact, encompassed within the 

claims. We therefore find that the district court erred in concluding that Citrix failed to 

demonstrate that there was no genuine issue of material fact concerning infringement of 

claim 1 of the ’942 patent. 

B. Sanctions 

 This case was not litigated well by Orenshteyn and his counsel. However, while 

sanctions are awarded by a trial judge who is in the best position to appraise the 

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conduct of a party and counsel, there is a high standard to be met. We find that that 

standard was not fully met here. 

1. Rule 11 Sanctions

 “An appellate court should apply an abuse-of-discretion standard in reviewing all 

aspects of a district court’s Rule 11 determination.” Cooter & Gell v. Hartmarx Corp., 

496 U.S. 384 (1990). In reviewing such decisions, we apply the law of the regional 

circuit. Intamin, Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328, 1337 (Fed. Cir. 2007). 

In this case, we apply the law of the Eleventh Circuit. 

 Citrix presented its motion for Rule 11 sanctions to Orenshteyn’s counsel on May 

16, 2003. Four days later, the district court entered final judgment of noninfringement. 

On June 19, 2003, thirty-five days after presenting its motion to counsel, Citrix filed its 

motion for Rule 11 sanctions with the district court. 

 Rule 11 requires that a motion for sanctions “must not be filed . . . if the 

challenged . . . claim . . . is withdrawn within 21 days after service.” Fed. R. Civ. P. 

11(c)(2). The twenty-one day “safe harbor” provision was added to the rule in 1993. 

The Eleventh Circuit has recently interpreted the safe harbor provision as requiring a 

motion for Rule 11 sanctions to be filed prior to final judgment. 

We agree with the Second, Fourth, and Sixth Circuits that the service and 

filing of a motion for sanctions must occur prior to final judgment or judicial 

rejection of the offending motion. Any argument to the contrary renders 

the safe harbor provision a mere formality. The provision cannot have any 

effect if the court has already denied the motion; it is too late for the 

offending party to withdraw the challenged contention. 

In re Walker, 532 F.3d 1304, 1308 (11th Cir. 2008). In this case, Citrix’s motion for 

sanctions was not filed prior to final judgment, so Orenshteyn was unable to avail 

himself of the twenty-one day safe harbor provision. The court entered final judgment of 

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noninfringement on both patents before the twenty-one day period had elapsed. Thus, 

the district court awarded Rule 11 sanctions in circumstances where Orenshteyn was 

deprived of a benefit provided by the rule, in effect, on an erroneous view of the law. 

We therefore reverse the court’s imposition of Rule 11 sanctions against appellants as 

an abuse of discretion. See Cooter, 496 U.S. 384, 402 (“If a district court's findings rest 

on an erroneous view of the law, they may be set aside on that basis.” (citation 

omitted)). 

2. Section 1927 Sanctions

 In reviewing sanctions decisions from a district court, we apply the law of the 

regional circuit in which the district court sits. Nystrom v. Trex Co., 424 F.3d 1136, 1139 

(Fed. Cir. 2005). The Eleventh Circuit reviews the district court’s award of sanctions 

under 28 U.S.C. § 1927 under an abuse of discretion standard. Peterson v. BMI 

Refractories, Inc., 124 F.3d 1386, 1390 (11th Cir. 1997). 

 Section 1927 states: 

Any attorney or other person admitted to conduct cases in any court of the 

United States or any Territory thereof who so multiplies the proceedings in 

any case unreasonably and vexatiously may be required by the court to 

satisfy personally the excess costs, expenses, and attorneys' fees 

reasonably incurred because of such conduct. 

28 U.S.C. § 1927. The Eleventh Circuit imposes three requirements on an award of 

sanctions under section 1927. The attorney must first engage in “unreasonable and 

vexatious” conduct. Peterson, 124 F.3d at 1396. Second, the attorney’s unreasonable 

and vexatious conduct must multiply the proceedings. Id. Lastly, the amount of 

sanctions may not exceed the “costs, expenses, and attorneys’ fees reasonably 

incurred because of such conduct.” Id. 

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The district court based its decision to impose sanctions against Fink and 

Johnson under section 1927 on three aspects of the attorneys’ conduct. First, the court 

found that Fink and Johnson pursued Orenshteyn’s claims “recklessly and 

unreasonably.” Orenshteyn, No. 02-60478-Civ, slip op. at 16. As support for that 

finding, the court noted Fink’s and Johnson’s continued pursuit of the lawsuit in light of 

Orenshteyn’s apparent agreement with Citrix’s expert’s claim construction of 

“controller.” Id. Second, the court found that Fink and Johnson had “minimal” contact 

with Orenshteyn during their pre-filing investigation. Id. at 17. Lastly, the court was 

disturbed by the fact that neither Fink nor Johnson corrected the apparent 

inconsistencies between Orenshteyn’s deposition testimony and his testimony at the 

April 8, 2005 hearing regarding Orenshteyn’s conversations with counsel prior to filing 

suit. Id. 

 As we have reversed the court’s summary judgment of noninfringement, it goes 

without saying that Fink’s and Johnson’s position regarding infringement and the claim 

construction of “controller” was not totally unreasonable. As this case has not been 

tried, and we are merely reversing a grant of summary judgment of noninfringement, we 

cannot say whether Orenshteyn will eventually prevail in his suit, and the district court 

has noted that it harbors serious doubts about the ’942 patent’s validity. Orenshteyn, 

265 F. Supp. 2d at 1331 (stating that invalidity arguments “appear to be meritorious”). 

However, Orenshteyn’s position on the claim construction of “controller” was far from 

frivolous or unreasonable and thus did not vexatiously multiply the proceedings. 

Therefore, Fink’s and Johnson’s pursuit of the lawsuit cannot form a basis for sanctions 

under section 1927. 

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Furthermore, we do not see why Fink and Johnson should be sanctioned for their 

“minimal contact” with Orenshteyn during their pre-filing investigation. Both Fink and 

Johnson have scientific backgrounds that suggest that they are at least competent in 

conducting an investigation of this sort, and the district court never truly challenged that 

ability. In addition, there is some advantage in attorneys making their own independent 

evaluation of a patent infringement issue free from any inherent bias of the inventors. In 

any event, we can find no authority that requires attorneys to consult with patentees 

during the pre-filing investigation, although it would seem to be prudent, highly 

desirable, and the usual practice. Indeed, much of the district court’s dim view of Fink 

and Johnson’s conduct may be attributable to the court’s erroneous interpretation of 

Orenshteyn’s own view of the correct claim construction of his patent. The court viewed 

Orenshteyn’s deposition testimony as supporting Citrix’s proposed claim construction of 

“controller.” See Orenshteyn, No. 02-60478-Civ, slip op. at 13 (“Mr. Orenstheyn 

similarly testified that the term ‘controller,’ as used in his patents, means a hardwire 

device, and not a general purpose CPU.” (citing Orenshteyn’s deposition at 127-27)); id.

at 15 (characterizing Orenshteyn’s deposition testimony as “consistent” with Citrix’s 

claim construction). When read in context, however, Orenshteyn’s deposition testimony 

directly contradicts Citrix’s proposed claim construction that the term “controller” could 

not include a general purpose CPU. 

Q: What’s a controller? 

Orenshteyn: A processing element. 

Q: What’s an example? 

Orenshteyn: A processor, a chip, an integrated circuit. 

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Q: Could a Pentium chip be a controller? 

Orenshteyn: It could be. 

A Pentium chip is indisputably a CPU; thus, the court’s characterization of Orenshteyn’s 

testimony as supporting Citrix’s proposed construction is clearly erroneous. 

 The last aspect of Fink’s and Johnson’s conduct for which the court felt sanctions 

were warranted is their failure to correct Orenshteyn’s testimony regarding pre-filing 

investigation conversations. We defer to the district court’s characterization of 

Orenshteyn’s contradictory testimony regarding his conversations with his counsel. The 

court obviously felt that Fink and Johnson were less than forthcoming in failing to 

correct Orenshteyn’s statements. While it does not appear that this failure alone 

“multiplied the proceedings” to such a degree that sanctions were warranted under 

section 1927, we will leave that determination to the district court on remand. 

We note, however, that if the court does decide that such conduct alone merits 

sanctions, a new determination as to the amount of appropriate sanctions would need to 

be made as well. Under section 1927, only that portion of the applicable costs, 

expenses, and fees attributable to the multiplication of the proceedings that resulted 

from the failure to correct testimony could be awarded. See Peterson, 124 F.3d at 

1396. That amount would appear to be a fraction of the total litigation cost, but we 

leave that determination to the district court on remand. 

CONCLUSION 

 Because the court erred in granting summary judgment of noninfringement of 

claim 1 of the ’942 patent, we reverse in part. We affirm the rest of the court’s grant of 

summary judgment relating to the other claims in the case and all Citrix products other 

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than MetaFrame for Windows 1.8. We also reverse the court’s imposition of Rule 11 

sanctions against Orenshteyn, Fink, and Johnson as an abuse of discretion. We vacate

the court’s grant of section 1927 sanctions against Fink and Johnson. We remand the 

case for further proceedings in accordance with this opinion.