Remote Access Computing Lawsuit Begets Real-Time Fee Award For Citrix

Posted on | June 4, 2008 | 1 Comment

2008-1378 Orenshteyn v. Citrix Systems
SD/FL 02-CV-60478

Counsel for Orenshteyn have appealed Judge Adalberto Jordan’s Order granting Citrix’s motion for attorney fees. 

Yes, you read that correctly–counsel.  In yet another joint and several attorneys fees sanction, Judge Jordan held that  Mr. Orenshteyn and his counsel are on the hook for over $750,000.  Considering that Mr. Orenshteyn filed for bankruptcy protection in 2005, counsel, quite literally, have a lot riding on this appeal. 

The lawsuit, filed in 2002, centers on technology near and dear to many of our readers–remote access computing.  Orenshteyn claimed that Citrix’s remote access systems infringed his 5,889,942 and 6,393,569 patents, but Judge Jordan held otherwise.  While many of the details surrounding the sanctions were apparently the subject of a 2005 hearing, Judge Jordan’s summary judgment opinion reveals a good deal about what likely sparked the fee award. 

In 2003, Judge Jordan granted Citrix’s motion for summary judgment
and laid the foundation for his sanctions. Citrix’s summary judgment
motion hinged on the construction of the term "controller." With the
support of an expert opinion, Citrix argued that the claimed
"controller" was not the general purpose CPU required by each of its
accused devices.  Citrix’s expert opined that the claimed "controller"
was a "replacement" for a general purpose CPU. 

Judge Jordan agreed, holding that "controller" means "something
other than a general purpose CPU."  In addition to citing the expert
reports, however, Judge Jordan’s opinion references several portions of
the specification that distinguish the claimed "controller" from a CPU,
including: 

[E]xpensive general purpose processing
CPUs are preferably replaced with inexpensive but powerful controllers,
such as DSP chips. 

***

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 as system which is
less expensive to own and maintain but at the same time does not
short-change the user by taking away features we all have come to
expect from our PCs.

***

Instead of a conventional general purpose CPU, inexpensive but
powerful controller circuits will be utilized for controlling storage
devices and other I/O hardware.

As all of Citrix’s
accused systems require a general purpose CPU, Judge Jordan held that
they could not infringe the Orenshteyn patents.  While the Court’s
noninfringement analysis is straightforward, peppered throughout the
opinion are the clues to the Court’s sanction award. And in this case,
it’s not what Mr. Orenshteyn and his counsel did, it’s what they didn’t
do.

Judge Jordan took care (and several pages) to detail Orenshteyn’s discovery strategy, including his choice not
to depose Citrix’s expert and his refusal to disclose the claims he
intended to assert, his claim construction, or his infringement
theory.  While Orenshteyn finally disclosed the latter items under
Court Order, Judge Jordan noted that he failed to offer any basis for
his claim construction or any citations supporting his claim chart. 

And then there’s Mr. Orenshteyn’s deposition.  Despite representing
in his initial disclosures that he was the only person known to have
discoverable information supporting his claims, Mr. Orenshteyn
testified that:

• he did not know anything about Citrix’s products–in fact, he could not name one of them,
• his counsel did not explicitly consult him about filing the lawsuit,
• he did not consult with his attorneys prior to filing the lawsuit,
• he did not know if his counsel conducted any pre-suit investigation, and
• that he relied on his counsel "100 percent" in filing the suit. 

Update:  Mr. Orenshteyn has also filed an appeal In Forma Pauperis.  It will be worth watching the briefing to see how–or if–counsel and client cooperate before the Federal Circuit.   

So the next time you log in from home, the beach, or someplace less hospitable, remember your password and
your ethical obligations.  While it’s not even half over, 2008 might as
well be dubbed "The Year of the Cautionary Tale."  Coupled with other recent fee award cases like Qualcomm, Medtronic, and ClearValue,
Judge Jordan’s opinion makes clear that attorney sanctions are a trend worth watching.*

More reading: 

Judge Jordan’s Summary Judgment Opinion and Order

Report and Recommendation re Attorney Fees (Magistrate Judge Edwin Torres)

*Disclosure:  Our firm, Renner Otto, represents BrainLAB in the pending Medtronic v. BrainLAB matter. 

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