  United States Court of Appeals
      for the Federal Circuit
              __________________________

           ALEXANDER S. ORENSHTEYN,
                Plaintiff-Appellant,

                          v.
               CITRIX SYSTEMS, INC.,
                  Defendant-Appellee.
              __________________________

                      2011-1308
              __________________________

   Appeal from the United States District Court for the
Southern District of Florida in No. 02-CV-60478, Judge
Adalberto Jordan.
              __________________________

                    ON MOTION
              __________________________

   Before, NEWMAN, LINN, and REYNA, Circuit Judges.

NEWMAN, Circuit Judge, dissents from the order granting
                the motion to dismiss.

LINN, Circuit Judge.

                       ORDER

   Citrix Systems, Inc. (“Citrix”) moves to dismiss as
premature Alexander S. Orenshteyn’s (“Orenshteyn”)
ORENSHTEYN   v. CITRIX SYSTEMS                            2

appeal of an October 1, 2010, order granting in part a
motion for sanctions. Orenshteyn opposes.

     On April 6, 2002, Orenshteyn filed a complaint
against Citrix alleging patent infringement. During the
course of litigation, the district court granted in part
Citrix’s motion for sanctions against Orenshteyn and his
prior counsel, and referred the matter to a magistrate
judge for a report and recommendation to determine the
amount of sanctions. Subsequently, the district court
granted Citrix’s motion on the merits for summary judg-
ment of invalidity. Orenshteyn appealed, seeking review
of the district court’s invalidity determination and the
order granting sanctions. The district court has not yet
made a final determination regarding the amount of
sanctions.

    Citrix contends that the portion of Orenshteyn’s ap-
peal concerning the order granting sanctions is premature
because that order is not a final, appealable decision. See
View Eng’g, Inc. v. Robotic Vision Sys., Inc., 115 F.3d 962,
964 (Fed. Cir. 1997). We agree.

    By statute, this court has jurisdiction over an appeal
of a decision of a district court if it is “final” under 28
U.S.C. § 1295(a)(1) or if it is an interlocutory order as
specified in 28 U.S.C. § 1292. The district court’s decision
on the merits—its decision on validity—is final and
reviewable by this court. Budinich v. Becton Dickinson &
Co., 486 U.S. 196, 202-03 (1988) (“[A] decision on the
merits is a ‘final decision’ . . . whether or not there re-
mains for adjudication a request for attorney’s fees at-
tributable to the case.”). But the district court’s decision
granting sanctions is a separate order which is not final
and appealable until the district court has decided the
amount of sanctions. See White v. N.H. Dep’t of Emp’t
Sec., 455 U.S. 445, 452 (1982) (“Unlike other judicial
3                              ORENSHTEYN   v. CITRIX SYSTEMS

relief, the attorney’s fees . . . are not compensation for the
injury giving rise to an action. Their award is uniquely
separable from the cause of action to be proved at trial.”);
McCarter v. Ret. Plan for the Dist. Managers of the Am.
Family Ins. Grp., 540 F.3d 649, 652 (7th Cir. 2008) (“[T]he
upshot of White’s approach is that decisions on the merits
and decisions about attorneys’ fees are treated as sepa-
rate final decisions, which must be covered by separate
notices of appeal—each filed after the subject has inde-
pendently become ‘final.’”); see also Falana v. Kent State
Univ., 669 F.3d 1349, 1360 (Fed. Cir. 2012); View Eng’g,
115 F.3d at 964.

    In rare circumstances, the doctrine of pendent appel-
late jurisdiction allows federal courts of appeals limited
discretion to review a ruling that is not independently
appealable if jurisdiction exists over another related
ruling. Cf. Swint v. Chambers Cnty. Comm’n, 514 U.S.
35, 50-51 (1995) (“[W]e have not universally required
courts of appeals to confine review to the precise decision
independently subject to appeal.”). Thus, the only issue
here is whether this court should exercise pendent juris-
diction over Orenshteyn’s appeal of the sanctions order.
We conclude that we should not, following Supreme Court
guidance that the exercise of pendent jurisdiction is
limited to exceptional circumstances.

    The Supreme Court in Swint provided two essential
reasons why pendent jurisdiction should be limited. First,
Congress specifically provided district courts the author-
ity to certify an interlocutory order as appealable under
28 U.S.C. § 1292(b) (applicable to this court under 28
U.S.C. § 1292(c)(1)), and § 1292(b) is undermined if appel-
late courts take jurisdiction over appeals from non-final
orders in the absence of district court certification. Swint,
514 U.S. at 46-47. Second, the Supreme Court has ex-
press rulemaking authority to expand the list of appeal-
ORENSHTEYN   v. CITRIX SYSTEMS                             4

able interlocutory orders, implying that this is not a
determination to be made by judicial decision of a circuit
court. See id. at 48 (citing 28 U.S.C. §§ 1292(e), 2072).

    After Swint, it is clear that a court of appeals may
have pendent jurisdiction when the appealable and non-
appealable decisions are “inextricably intertwined” or
when review of the non-appealable decision is necessary
to review the appealable one. See id. at 51. While Swint
did not “definitively or preemptively settle . . . whether or
when it may be proper for a court of appeals, with juris-
diction over one ruling, to review, conjunctively, related
rulings that are not themselves independently appeal-
able,” the Supreme Court nevertheless found that pen-
dent jurisdiction did not exist when the non-appealable
decision was neither “inextricably intertwined with” nor
“necessary to ensure meaningful review of” the appealable
decision. 514 U.S. at 50-51. Thus, notwithstanding the
qualifying language in Swint, this court cannot exercise
pendent jurisdiction unless at least one of the Swint tests
is met without contradicting the central holding of Swint.
Moreover, both the Supreme Court and this court have
subsequently used the tests propounded in Swint to
evaluate whether pendent jurisdiction exists, further
reinforcing that the tests in Swint are the relevant stan-
dard. See Clinton v. Jones, 520 U.S. 681, 707 n.41 (1997);
Advanced Fiber Techs. (AFT) Trust v. J & L Fiber Servs.,
Inc., 674 F.3d 1365, 1376-77 (Fed. Cir. 2012); Falana, 669
F.3d at 1359-62; Entegris, Inc. v. Pall Corp., 490 F.3d
1340, 1348-50 (Fed. Cir. 2007); Intel Corp. v. Common-
wealth Scientific & Indus. Research Org., 455 F.3d 1364,
1369, 1371 (Fed. Cir. 2006); Helifix, Ltd. v. Blok-Lok, Ltd.,
208 F.3d 1339, 1345 (Fed. Cir. 2000). But see iLOR, LLC
v. Google, Inc., 550 F.3d 1067, 1073 n.1 (Fed. Cir. 2008)
(declining to exercise pendent appellate jurisdiction sua
sponte without citing the Swint tests); Procter & Gamble
Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 846-47 (Fed.
5                             ORENSHTEYN   v. CITRIX SYSTEMS

Cir. 2008) (exercising pendent jurisdiction, without citing
Swint, based on “‘. . . the extent that review of the appeal-
able order will involve consideration of factors relevant to
the otherwise nonappealable order.’” (quoting Intermedics
Infusaid, Inc. v. Regents of the Univ. of Minn., 804 F.2d
129, 134 (Fed. Cir. 1986))).

    Relying on Swint, this court found no pendent juris-
diction in Falana based on similar facts to those present
here. 669 F.3d at 1359-62. In Falana, Kent State sought
to appeal a final district court decision on inventorship
along with a non-final award of unquantified attorney
fees based on an exceptional case finding. Id. at 1359-60.
This court declined to exercise pendent jurisdiction over
the unquantified award of attorney fees, notwithstanding
the final judgment on inventorship. Id. at 1359-62.
Falana is our closest controlling precedent.

    This court’s holding in Falana is consistent with the
holdings of other circuits declining to exercise pendent
jurisdiction over unquantified sanctions or attorney fees.
Several circuits declined to exercise jurisdiction over
unquantified attorney fees when appealed with final
decisions even before Swint. See Cooper v. Salomon Bros.,
1 F.3d 82, 85 (2d Cir. 1993); Pennsylvania v. Flaherty, 983
F.2d 1267, 1275-77 (3d Cir. 1993); Becton Dickinson & Co.
v. Dist. 65, United Auto., Aerospace & Agric. Implement
Workers, 799 F.2d 57, 61-62 (3d Cir. 1986); S. Travel
Club, Inc. v. Carnival Air Lines, Inc., 986 F.2d 125, 129-
31 (5th Cir. 1993); Pa. Nat’l Mut. Cas. Ins. Co. v. Pitts-
burg, 987 F.2d 1516, 1520-21 (10th Cir. 1993). In light of
Swint, the Seventh Circuit expressly overruled its deci-
sions allowing pendent jurisdiction over unquantified
attorney fees. McCarter, 540 F.3d at 653-54. While the
Eleventh Circuit continued to assert that it had discretion
to exercise pendent jurisdiction over an award of attorney
fees after Swint, it declined to do so. Hibiscus Assocs. Ltd.
ORENSHTEYN   v. CITRIX SYSTEMS                           6

v. Bd. of Trs. of the Policemen & Firemen Ret. Sys., 50
F.3d 908, 921-22 (11th Cir. 1995). Even though the D.C.
Circuit has a more permissive interpretation of Swint
than most circuits and did not create a “blanket rule”
prohibiting pendent jurisdiction over unquantified attor-
ney fees, the D.C. Circuit declined to exercise pendent
jurisdiction over unquantified attorney fees and antici-
pated that review of such orders “will be rare exceptions.”
Gilda Marx, Inc. v. Wildwood Exercise, Inc., 85 F.3d 675,
676, 678-80 (D.C. Cir. 1996); see also Kilburn v. Socialist
People’s Libyan Arab Jamahiriya, 376 F.3d 1123, 1133-34
(D.C. Cir. 2004).

    There have been rare cases in which courts in other
circuits have taken jurisdiction over an unquantified
award of attorney fees, but these were special cases, such
as when the award actually met one of the Swint tests for
pendent appellate jurisdiction. See Thornton v. Gen.
Motors Corp., 136 F.3d 450, 451, 453-54 (5th Cir. 1998)
(exercising pendent appellate jurisdiction when the sanc-
tion of unquantified attorney fees was “‘inextricably
intertwined’” with a final sanctions order suspending the
appellant from the practice of law); M & C Corp. v. Erwin
Behr GmbH & Co., KG, 289 F. App’x. 927, 932 (6th Cir.
2008) (unpublished) (finding a final award of statutory
penalties allowed pendent jurisdiction over an “inter-
twined” unquantified award of litigation expenses based
on the same statute); see also In re Dyer, 322 F.3d 1178,
1186-88 (9th Cir. 2003) (taking jurisdiction over a sanc-
tions award in the context of the “flexible finality stan-
dards” of bankruptcy law, but “stop[ping] short of
adopting a similar rule in non-bankruptcy cases”). These
are the exceptions that prove the general rule that an
unquantified award of attorney fees is not inherently or
universally appealable under pendent jurisdiction, and
instead must meet the same standards as any other
decision to qualify for pendent appellate jurisdiction.
7                             ORENSHTEYN   v. CITRIX SYSTEMS

    Therefore, the circuits, including this one, are in gen-
eral agreement that an unquantified award of attorney
fees does not usually warrant the exercise of pendent
jurisdiction. Unlike Thornton and M & C in which the
final decision and the non-final award of attorney fees had
essentially the same legal basis, the finding of invalidity
and the sanctions in the present case have different legal
bases requiring different legal analyses. Thus, this court
finds no indication in the present case that the unquanti-
fied sanction is “inextricably intertwined” with or neces-
sary to review the final decision on the merits. See Swint,
514 U.S. at 51; Clinton, 520 U.S. at 707 n.41. This court
does not assert that Swint precludes the exercise of all
pendent jurisdiction. See Helifix, 208 F.3d at 1345. This
court simply follows Falana in declining to exercise pen-
dent jurisdiction over the unquantified sanction because
to do so would be inconsistent with the standards estab-
lished in Swint.

    The dissent errs in relying on Akron Polymer Con-
tainer Corp. v. Exxel Container, Inc., 148 F.3d 1380 (Fed.
Cir. 1998), and Majorette Toys (U.S.), Inc. v. Darda, Inc.,
798 F.2d 1390 (Fed. Cir. 1986). In Akron, this court
appeared to exercise jurisdiction over an unquantified
award of attorney fees with a final judgment of inequita-
ble conduct. 148 F.3d at 1381, 1384. However, Akron
never discussed the jurisdictional or finality issues. Id.
Generally, when an issue is not discussed in a decision,
that decision is not binding precedent. See Nat’l Cable
Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937
F.2d 1572, 1581 (Fed. Cir. 1991) (“When an issue is not
argued or is ignored in a decision, such decision is not
precedent to be followed in a subsequent case in which the
issue arises.”); see also New v. Oklahoma, 195 U.S. 252,
256 (1904). Beyond the general proposition, this court
previously found that Akron was not binding precedent on
the jurisdictional or finality issue.
ORENSHTEYN   v. CITRIX SYSTEMS                             8

    [W]e recognize that this court has reviewed an
    award of attorney fees without a quantified
    amount. E.g., Akron Polymer Container Corp. v.
    Exxel Container, Inc., 148 F.3d 1380, 47 USPQ2d
    1533 (Fed.Cir.1998). However, in Akron, the fi-
    nality issue was raised neither by the parties nor
    sua sponte by the court. Because Akron did not
    confront and decide the same issue, it is not prece-
    dent on the question before us.

Special Devices, Inc. v. OEA, Inc., 269 F.3d 1340, 1346
(Fed. Cir. 2001). Thus, this court is not bound to follow
Akron.

    Majorette is also not controlling for three reasons: Ma-
jorette is dicta with regard to exercising jurisdiction over
unquantified attorney fees; it is distinguishable from the
present case; and it was superseded by Swint. First,
Majorette asserted that the court had jurisdiction over
what, after Budinich, would be a final decision on the
merits and a non-final award of unquantified attorney
fees. See Majorette, 798 F.2d at 1391-92. While the
dissent notes the appeal was challenged under 28 U.S.C.
§ 1295(a) and § 1292, Dissent Op. at 5, the court actually
took jurisdiction over the entire case by analogizing to an
appeal of a judgment of patent infringement that is final
but for an accounting of damages under 28 U.S.C.
§ 1292(c)(2). Majorette, 798 F.2d at 1391-92. The court in
Majorette had no statutory basis upon which to draw such
an analogy. However, when the case was actually de-
cided, there was no mention of the attorney fees. Darda
Inc. U.S.A. v. Majorette Toys (U.S.) Inc., No. 86-921, 1987
WL 36118 (Fed. Cir. Mar. 30, 1987) (nonprecedential).
Therefore, the portion of the order in Majorette taking
jurisdiction over the attorney fees appears to be dicta as it
was unnecessary to decide the case, and hence is not
controlling over the present case.
9                             ORENSHTEYN   v. CITRIX SYSTEMS

    Additionally, the interpretation of Majorette in Jo-
hannsen v. Pay Less Drug Stores Nw., Inc., 918 F.2d 160
(Fed. Cir. 1990), confirms that the focus of Majorette was
taking jurisdiction over the merits of the case. Discussing
Budinich, the court in Johannsen suggested that the
decision on the merits was final, notwithstanding the
unquantified attorney fees. Johannsen, 918 F.2d at 163-
64. Nothing in Johannsen suggests that the unquantified
award of attorney fees was directly appealable as final
under § 1295, contrary to the interpretation of Johannsen
in the dissent. Dissent Op. at 6.

    Second, Johannsen made clear that § 1292(c)(2) ap-
plies only when there is a finding of patent infringement.
Johannsen, 918 F.2d at 162 (“[I]f the patent owner loses
at trial . . . § 1292(c)(2) is not applicable, there being no
impending accounting.”). There was a finding of patent
infringement in Majorette. 798 F.2d at 1391. But in the
present case, there was no finding of patent infringement,
making Majorette’s analogy to § 1292(c)(2) inapplicable.

    Third, Majorette preceded the Supreme Court’s Swint
decision, and so Swint supersedes Majorette to the extent
that the two conflict. We disagree with the dissent’s
argument that Swint is distinguishable because the
pendent jurisdiction at issue in Swint was “pendent
party” jurisdiction and the appealable decision in Swint
“was only appealable under the collateral order doctrine.”
Dissent Op. at 12-14. Swint discusses pendent jurisdic-
tion generally, and the reasoning provided therein is
broadly applicable to all pendent jurisdiction. See Swint,
514 U.S. at 40, 43-48. Swint is widely considered to have
thrown “cold water on pendent appellate jurisdiction.”
McCarter, 540 F.3d at 653-54. Both the Supreme Court
and this court have applied the tests from Swint to pen-
dent jurisdiction generally, and not merely pendent party
jurisdiction or jurisdiction pendent to a decision appeal-
ORENSHTEYN   v. CITRIX SYSTEMS                            10

able under the collateral order doctrine. See Clinton, 520
U.S. at 707 n.41 (“The Court of Appeals correctly found
that pendent appellate jurisdiction over this issue was
proper. The District Court’s legal ruling that the Presi-
dent was protected by a temporary immunity from trial—
but not discovery—was ‘inextricably intertwined,’ . . . with
its suggestion that a discretionary stay having the same
effect might be proper; indeed, ‘review of the [latter]
decision [is] necessary to ensure meaningful review of the
[former] . . . .’” (brackets in original) (internal citations
omitted)); Entegris, 490 F.3d at 1349 (“[W]e find that
Pall’s appeal of the contempt order is not ‘inextricably
intertwined’ with Mykrolis’ cross-appeal of the dissolution
of the preliminary injunction. . . . [W]e find that exercis-
ing pendent jurisdiction is not appropriate with respect to
Pall’s appeal.”); Helifix, 208 F.3d at 1345 (“We exercise
our discretion to invoke pendent appellate jurisdiction
over the interlocutory grant of summary judgment . . . .
[T]he denial of the preliminary injunction and the grant of
summary judgment are ‘inextricably intertwined.’”).
Thus, we see no basis upon which to limit Swint only to
pendent party jurisdiction.

    Finally, while the dissent observes that cases after
Swint have used language different in degree from that
present in Swint, including references to judicial effi-
ciency, Dissent Op. at 8-9, 17-18, these cases typically rely
on, refer to, or are consistent with the Swint tests. See In
re Tutu Wells Contamination Litig., 120 F.3d 368, 382 &
n.12 (3d Cir. 1997) (citing the Swint tests in a footnote
and finding pendent appellate jurisdiction proper because
the “two appeals rais[e] the identical legal challenge” and
resolving one appeal resolves the other), abrogated in part
by Comuso v. Nat’l R.R. Passenger Corp., 267 F.3d 331,
339 (3d Cir. 2001); Comstock Oil & Gas Inc. v. Alabama &
Coushatta Indian Tribes, 261 F.3d 567, 570-71 (5th Cir.
2001) (finding a party’s jurisdictional arguments based on
11                             ORENSHTEYN   v. CITRIX SYSTEMS

Swint “compelling” and finding the case presented the
“rare and unique circumstances” warranting the exercise
of pendent jurisdiction because the decisions “involve
overlapping issues of law and fact”); Farm Labor Org.
Comm. v. Ohio State Highway Patrol, 308 F.3d 523, 549-
51 (6th Cir. 2002) (noting the judicial efficiency interests
“underlying the pendent appellate jurisdiction doctrine”
after stating that “[u]nder the doctrine of pendent appel-
late jurisdiction . . . a court of appeals may, in its discre-
tion, ‘exercise jurisdiction over issues that are not
independently appealable when those issues are “inextri-
cably intertwined” with matters over which the appellate
court properly and independently has jurisdiction’” (quot-
ing Chambers v. Ohio Dep’t. of Human Servs., 145 F.3d
793, 797 (6th Cir. 1998) (citing Swint, 514 U.S. 35), cert.
denied, 525 U.S. 964 (1998))); Brennan v. Twp. of North-
ville, 78 F.3d 1152, 1157-58 (6th Cir. 1996) (exercising
discretion to take pendent jurisdiction “in the interest of
judicial economy” after discussing that the court’s “discre-
tionary exercise of pendent appellate jurisdiction in this
case is consistent with that of other courts of appeals,
which have interpreted dictum in Swint . . . as allowing
pendent appellate jurisdiction where the appealable and
non-appealable issues are ‘inextricably intertwined’”);
Greenwell v. Aztar Ind. Gaming Corp., 268 F.3d 486, 491
(7th Cir. 2001) (finding, after discussing Swint, that
“Greenwell’s malpractice claim against Aztar is entwined
with Aztar’s indemnity claim against the doctors . . . , and
since we must decide the latter, we might as well decide
the former at the same time and head off a second ap-
peal”); Mueller v. Auker, 576 F.3d 979, 989-91 (9th Cir.
2009) (finding a failure to take jurisdiction would fly “in
the face of efficient judicial administration,” but relying
on the “inextricably intertwined” test from Swint and
quoting extensively from Brennan, 78 F.3d 1152). Even
though the D.C. Circuit uses “more expansive language”
regarding pendent jurisdiction, including “efficiency,” the
ORENSHTEYN   v. CITRIX SYSTEMS                            12

D.C. Circuit has “so far largely confined the doctrine to
cases that come within one or the other of the Swint
conditions.” Kilburn, 376 F.3d at 1133-34; see Nat’l R.R.
Passenger Corp. v. ExpressTrak, L.L.C., 330 F.3d 523, 527
(D.C. Cir. 2003) (noting that pendent jurisdiction is not
exercised “liberally,” but will be invoked “in two circum-
stances: (1) ‘when substantial considerations of fairness or
efficiency demand it,’ . . . such as when a non-appealable
order is ‘inextricably intertwined’ with an appealable
order, . . . or (2) when review of the former decision is
‘necessary to ensure meaningful review of the latter.’”
(quoting Gilda Marx, 85 F.3d at 679)). But see Jungquist
v. Sheikh Sultan Bin Khalifa Al Nahyan, 115 F.3d 1020,
1026-27 (D.C. Cir. 1997) (citing Swint, but finding “the
availability of pendent appellate jurisdiction is not limited
to circumstances where claims are ‘so closely related’ that
review of the former is necessary to, or will dispose of,
review of the latter. Gilda Marx, 85 F.3d at 679. Consid-
erations of fairness or efficiency may also justify the
exercise of pendent appellate jurisdiction when the ‘re-
view will likely terminate the entire case, sparing both
this court and the district court from further proceedings
and giving the parties a speedy resolution.’ Id.”). Despite
the minor deviation in the D.C. Circuit, this court contin-
ues to follow the approach of the majority of its sister
circuits and its own precedent in primarily relying on the
Swint tests to determine whether pendent jurisdiction is
appropriate.

     Even if this court could take jurisdiction in the pre-
sent case—which it cannot—the exercise of pendent
jurisdiction is discretionary, and this court would decline
to exercise its discretion in this case. See Intel, 455 F.3d
at 1371. This court sees little judicial efficiency in hear-
ing the non-final sanctions issue with the decision on the
merits. While reversing the sanctions order could poten-
tially eliminate a second appeal, affirming the sanctions
13                           ORENSHTEYN   v. CITRIX SYSTEMS

order could result in a separate appeal of the amount.
This is a slender reed upon which to rest jurisdiction.
Moreover, the sanctions order also covers Orenshteyn’s
counsel, who are at present unable to appeal the non-final
order, further indicating that another appeal of the same
sanctions order could follow even if this court did take
jurisdiction. Moreover, this court disagrees with the
dissent that the district court “prudently” dealt with the
problem of piecemeal litigation by waiting to see if this
court would affirm its award before deciding the amount
of that award. Dissent Op. at 10. The prudential way to
avoid “piecemeal appeals” is for the district court to
“promptly” hear and decide claims for attorney’s fees;
“[s]uch practice normally will permit appeals from fee
awards to be considered together with any appeal from a
final judgment on the merits.” White, 455 U.S. at 454
(footnote omitted).

    Consistent with Falana, and following the Supreme
Court’s decision in Swint, we decline to exercise pendent
jurisdiction over the appeal of the sanctions order in this
case. There is no indication that the order granting
sanctions is inextricably intertwined with or necessary to
review the decision on the merits for summary judgment.
Therefore, we grant Citrix’s motion. Orenshteyn may
appeal from a final sanctions determination in the ordi-
nary course.

        Accordingly,

     IT IS ORDERED THAT:

    Citrix’s motion to dismiss the appeal of the district
court’s sanction order is granted.
ORENSHTEYN   v. CITRIX SYSTEMS                      14

                                 FOR THE COURT


July 26, 2012                     /s/ Jan Horbaly
       Date                      Jan Horbaly
                                 Clerk

cc: Joseph J. Zito, Esq.
    Douglas J. Kline, Esq.
  United States Court of Appeals
      for the Federal Circuit
                __________________________

           ALEXANDER S. ORENSHTEYN,
                Plaintiff-Appellant,

                             v.
                CITRIX SYSTEMS, INC.,
                   Defendant-Appellee.
                __________________________

                        2011-1308
                __________________________

   Appeal from the United States District Court for the
Southern District of Florida in Case No. 02-CV-60478,
Judge Adalberto Jordan.
              __________________________

NEWMAN, Circuit Judge, dissenting.

    On this appeal from the district court’s final judgment of
patent invalidity and accompanying sanctions, the defen-
dant Citrix Systems moved to dismiss as premature that
portion of the appeal that relates to the award of sanctions.
My colleagues on this panel hold that the final judgment on
the merits is appealable, but refuse to include the appeal of
the accompanying sanctions because the attorney fees and
costs have not been quantified. The final judgment of
invalidity, and the attorney fees and costs awarded as
sanctions, arise from the same factual and legal considera-
tions, and will now require further redundancy of effort, by
ORENSHTEYN   v. CITRIX SYSTEMS                                2


yet a third panel of this court. The result is not only judicial
inefficiency, at the district court as well as this court, but
also unnecessary burdens and costs for the parties. From
my colleagues’ inappropriate disposition, I respectfully
dissent.

                         DISCUSSION

    This case started in 2002, when Mr. Orenshteyn,
through prior counsel, sued Citrix for patent infringement.
In 2003 the district court granted Citrix’s motion for sum-
mary judgment of non-infringement, and levied sanctions
against Mr. Orenshteyn under Rule 11, and against his
counsel under Rule 11 and 28 U.S.C. §1927.

    On appeal, this court reversed the summary judgment of
non-infringement. The court also reversed the Rule 11
sanctions for failure to comply with the twenty-one day “safe
harbor” provision of Rule 11(c)(2). Orenshteyn v. Citrix Sys.,
Inc., 341 Fed. Appx. 621 (Fed. Cir. 2009). This court also
vacated the §1927 sanction against counsel, holding that
“only that portion of the applicable costs, expenses, and fees
attributable to the . . . failure to correct testimony could be
awarded.” Id. at 628.

    On remand, the district court reimposed the same sanc-
tions, but instead of Rule 11 the court substituted its inher-
ent powers, and also reapplied the §1927 sanction against
counsel. The district court also granted Citrix’s motion for
summary judgment of patent invalidity, and entered final
judgment. Mr. Orenshteyn, now with different counsel, filed
this appeal from the final judgment and the sanctions. The
district court, in declining to proceed with quantification of
the sanctions, stated that “a finding in favor of Plaintiff on
appeal could affect Citrix’s entitlement to attorney fees and
costs.” Order Staying Motion to Determine Fees and Costs,
3                              ORENSHTEYN   v. CITRIX SYSTEMS


Doc. #375, Mar. 21, 2011. My colleagues on this panel
apparently deem this to be reversible error. It is not. The
district court acted in accordance with precedent and logic, a
pragmatic move toward resolution of this prolonged litiga-
tion. In contrast, the panel majority now requires the
district court to proceed with quantification, although the
Federal Circuit has not reviewed the award of the sanction,
and another Federal Circuit panel will be obliged to restudy
the merits of the patent and the criticized litigation proce-
dures. The precedent of this court and of the Supreme
Court is contrary to this inefficient process.

    The controlling precedent of the Federal Circuit is Ma-
jorette Toys, Inc. v. Darda, Inc., 798 F.2d 1390 (Fed. Cir.
1986), where this court, in precisely this situation, accepted
the appeal of the judgment on the merits and the levy of
attorney fee sanctions. The court explained that “it makes
no sense not to allow an appeal after validity, infringement,
and damages are ascertained, and an award of attorney fees
granted, even though the exact amount of attorney fees (and
costs) has not been ascertained.” Id. at 1391. The court
reasoned that appeal of the final judgment, together with
appeal of the accompanying award of sanctions, “harmo-
nizes with the objectives of 28 U.S.C. §1292(c)(2),” the
statute that grants our jurisdiction:

    (2) of an appeal from a judgment in a civil action for
    patent infringement which would otherwise be ap-
    pealable to the United States Court of Appeals for
    the Federal Circuit and is final except for an ac-
    counting.

The court in Majorette Toys stated that “allowing the pre-
sent appeal will prevent loss of time and expense,” for
“quantification will be irrelevant if on the bifurcated appeal
this court determines that it was an abuse of discretion to
ORENSHTEYN   v. CITRIX SYSTEMS                              4


award attorney fees at all.” 798 F.2d at 1391. This reason-
ing is of particular force here, for there already exists a
ruling of this court raising questions about the scope of the
district court’s sanctions. If the renewed award of sanctions
is again reversed or modified – a possibility suggested by
this court’s prior opinion based on the same transgressions –
the quantification of fees and costs will either be unneces-
sary or will have to be redone on still another remand.

    In Akron Polymer Container Corp. v. Exxel Container,
Inc., 148 F.3d 1380 (Fed. Cir. 1998), this court again re-
viewed an unquantified award of attorney fees, consolidated
with appeal of a finding of inequitable conduct. Id. at 1381
(“The second judgment [being appealed] held that Exxel’s
inequitable conduct causes the suit to be an ‘exceptional
case’ within the meaning of 35 U.S.C. §285 (1994), entitling
Akron Polymer to an award of its attorney fees, in an
amount to be determined at the conclusion of this appeal.”).
 This court reversed the judgment of inequitable conduct for
lack of intent, and concluded that “without a basis to sup-
port the judgment of unenforceability, there is no foundation
on which to conclude that this is an exceptional case under
section 285.” Id. at 1384.

     In the cases relied upon by the panel majority, the sanc-
tions were not appealed along with a final judgment on the
merits, as they are here. In Special Devices, Inc. v. OEA,
Inc., 269 F.3d 1340, 1345 (Fed. Cir. 2001), this court ex-
plained that “Majorette Toys analogized to the accounting
exception of 28 U.S.C. § 1292(c)(2),” whereby quantification
may be irrelevant. The court noted that: “this appeal is not
an appeal from a judgment of patent infringement. Rather,
it is an appeal from a judgment of an exceptional case,
separate from the judgment in the action for patent in-
fringement.” 269 F.3d at 1343 n.2. In Special Devices only
the issue of the award of attorney fees under 35 U.S.C. 285
5                              ORENSHTEYN    v. CITRIX SYSTEMS


was appealed; the court dismissed the appeal and explained
that: “as in Gilbreth [Gilbreth Int’l Corp. v. Lionel Leisure,
Inc., 802 F.2d 469 (Fed. Cir. Nov. 2 and 28, 1983)], only
attorney fees are at issue here. Accordingly, View Engineer-
ing is our closest precedent, not Majorette Toys.” Special
Devices, 269 F.3d at 1346. In View Engineering, Inc. v.
Robotic Vision Systems, Inc., 115 F.3d 962 (Fed. Cir. 1997),
the sole issue of the appeal again was the unquantified Rule
11 sanction. Here, Mr. Orenshteyn appeals the final judg-
ment on the merits of the patent action, and includes appeal
of the sanction based on his pursuit of that action. This
distinction is critical, as the court in Majorette Toys pointed
out in distinguishing Gilbreth, supra, that “the only issue
before the court in Gilbreth concerned attorney fees,” such
that there was no efficiency to be gained by review. 798
F.2d at 1392.

    Citrix offers the argument that Majorette Toys allows
review only when sanctions are awarded in favor of the
patentee, and not when the award is in favor of the accused
infringer. However, no basis for excluding the patentee
from seeking review appears in that decision. Majorette
Toys states that “Plaintiffs, appellees here, have moved to
dismiss and/or remand the appeal on the ground that,
because the judgment has not quantified attorney fees and
costs, it is neither a final decision pursuant to 28 U.S.C. §
1295(a) nor an appealable interlocutory decision pursuant to
28 U.S.C. § 1292.” 798 F.2d at 1391. The court ruled that
when appeal is taken from a final judgment on the merits,
the award of attorney fees and costs is also reviewable,
although not quantified. In Akron Polymer this court re-
versed an unquantified award of attorney fees against the
patentee along with reversal of a judgment of inequitable
conduct. 148 F.3d at 1384.
ORENSHTEYN   v. CITRIX SYSTEMS                              6


     My colleagues criticize Majorette Toys for analogizing to
§1292, stating that the court had “no statutory basis upon
which to draw such an analogy.” Maj. op. at 8. This court
has noted that “the judgment in Majorette Toys was actually
a ‘final decision’ appealable under §1295, and the court’s
discussion of §1292(c)(2) was not necessary to its holding on
jurisdiction.” Johannsen v. Pay Less Drug Stores Nw., Inc.,
918 F.2d 160, 162 (Fed. Cir. 1990). Although not necessary
to the holding, the analogy drawn in Majorette Toys is
sound, and fully applicable here, for the same efficiency
concerns that underlie §1292(c)(2) warrant allowing an
award of attorney fees to be reviewed along with the final
judgment on which that award is based. As we explained in
Majorette Toys:

    [Q]antification will be irrelevant if on appeal this
    Court determines that it was an abuse of discretion
    to award attorney fees at all. Accordingly, allowing
    the present appeal will prevent the loss of time and
    expense, and the need to explore what sometimes
    may be sensitive attorney records, in the event the
    case is overturned on the merits or in the determi-
    nation that attorney fees should be awarded. More-
    over, allowance of the appeal here fully harmonizes
    with the objectives of 28 U.S.C. § 1292(c)(2). . . .

798 F.2d at 1391-92. This reasoning is fully applicable here,
for quantification will again be irrelevant if the court de-
termines, while reviewing the merits, that attorney fees
should not have been awarded, such that “allowing the
present appeal will prevent the loss of time and expense.”
Id. at 1391.

   My colleagues also mistakenly state that Majorette Toys
was overturned or superseded by Swint v. County Chambers
Commission, 514 U.S. 35 (1995). Maj. op. at 9. My col-
7                               ORENSHTEYN    v. CITRIX SYSTEMS


leagues contend that in light of Swint judicial efficiency is
no longer important. Maj. op. at 10. Swint did not so hold.
Although the Swint Court decided not to review an unap-
pealable interlocutory decision along with an appealable
one, that decision was in part driven by the fact that the
questions involved were “unrelated,” 514 U.S. at 51, such
that consolidated review would not be particularly efficient.
 Swint held that efficiency did not justify jurisdiction in that
case, not that efficiency was no longer a relevant considera-
tion, as the panel majority contends.

    In resolving questions of appealability, considerations of
judicial efficiency and economy are routinely at the fore-
front. See Intermedics Infusaid, Inc. v. The Regents of the
University of Minnesota, 804 F.2d 129, 134 n.8 (Fed. Cir.
1986) (“The circuits have uniformly focused on the policy of
judicial economy in deciding whether to review pendent
orders and issues.”). As we explained in Katz v. Lear
Siegler, Inc., 909 F.2d 1459, 1461 (Fed. Cir. 1990):

    An interlocutory order that ordinarily would not be
    appealable may be given discretionary appellate re-
    view when it is ancillary to other matters that are
    appealable. . . . Consideration is given to the extent
    to which the appealable order involves factors perti-
    nent to the otherwise nonappealable order, such
    that judicial efficiency and the interest of justice are
    served by review.

These considerations remain important, as this court recog-
nized six years after Swint, in Special Devices:

    From the very foundation of our judicial system the
    object and policy of the acts of Congress in relation
    to appeals and writs of error . . . have been to save
    the expense and delays of repeated appeals in the
ORENSHTEYN   v. CITRIX SYSTEMS                               8


    same suit, and to have the whole case and every
    matter in controversy in it decided in a single ap-
    peal.

269 F.3d at 1343 (Fed. Cir. 2001) (quoting McLish v. Roff,
141 U.S. 661, 665-66 (1891)).

     The regional circuits also continue to recognize the im-
portant role of efficiency considerations in decisions on
pendent appealability after Swint, both within and outside
the context of attorney fees. See, e.g., Mueller v. Auker, 576
F.3d 979, 989-91 (9th Cir. 2009) (exercising “pendent Juris-
diction,” discussing Swint, and citing regional circuit cases
for “convincing analysis – rendered in the ‘interest of judi-
cial economy’”); In re Dyer, 322 F.3d 1178, 1187 (9th Cir.
2003) (“Delaying review of the sanctions order would result
in piecemeal litigation. . . . the opportunity to avoid piece-
meal litigation weighs heavily in favor of our jurisdiction.”);
National Railroad Passenger Corp. v. Expresstrak, L.L.C.,
330 F.3d 523, 527 (D.C. Cir. 2003) (“This court . . . generally
will invoke pendent jurisdiction . . . ‘when substantial
considerations of fairness or efficiency demand it’. . . .”);
Farm Labor Organizing Committee v. Ohio State Highway
Patrol, 308 F.3d 523, 551 (6th Cir. 2002) (“Our decision here
[to exercise jurisdiction] is compelled by the interests of
judicial efficiency underlying the pendent appellate jurisdic-
tion doctrine.”); Greenwell v. Aztar Indian Gaming Corp.,
268 F.3d 486, 491 (7th Cir. 2001) (“Greenwell’s malpractice
claim against Aztar is entwined with Aztar’s indemnity
claim . . . and since we must decide the latter, we might as
well decide the former at the same time and head off a
second appeal.”); Thornton v. General Motors Corp., 136
F.3d 450, 454 (5th Cir. 1998) (“[P]endent appellate jurisdic-
tion [is] appropriate over the attorney fees sanction. . . .
pendent review promotes judicial economy by providing both
parties with a speedy resolution of the issues while allowing
9                               ORENSHTEYN    v. CITRIX SYSTEMS


for a ‘sensible allocation of judicial resources.’”); Jungquist
v. Sheikh Sultan Bin Khalifa Al Nahyan, 115 F.3d 1020,
1026 (D.C. Cir. 1997) (“Considerations of fairness or effi-
ciency may also justify the exercise of pendent appellate
jurisdiction. . . .”); Gilda Marx, Inc. v. Wildwood Exercise, 85
F.3d 675, 678-79 (D.C. Cir. 1996) (“By choosing to entertain
a pendent appeal, we may sometimes be able to forestall a
second appeal, thus streamlining the judicial process,” citing
“the need for sensible allocation of judicial resources”);
Brennan v. Township of Northville, 78 F.3d 1152, 1158 (6th
Cir. 1996) (“As this appeal presents the quintessential case
for application of pendent appellate jurisdiction, we exercise
our discretion to do so in the interest of judicial economy.”).

    Well after Swint, leading commentators continue to ad-
vocate reviewing an unquantified award of fees along with a
final judgment on the merits, “whenever the circumstances
suggest that obvious efficiency advantages can be gained on
appeal without interfering with ongoing proceedings in the
trial court.” Wright & Miller, Federal Practice & Procedure
§3915.6. Commentators have correctly noted that “attorney
fee questions often require substantial litigation before the
district judge and turn on matters closely bound up with the
judgment on the merits,” such that courts may “expand the
scope of the appeal on the merits to permit review of a
determination to award attorney fees even though the
amount has not yet been set.” Id. As explained by Wright
and Miller:

    In extending review, commonly under the label of
    pendent jurisdiction, courts have tended to look for
    and to emphasize a strong relationship between the
    appealable order and the additional matters swept
    up into the appeal. Illustrations have been provided
    by appeals taken under a variety of expansive final-
    ity theories. Perhaps the simplest setting is pro-
ORENSHTEYN      v. CITRIX SYSTEMS                            10


    vided by review of an order awarding attorney fees
    on appeal from a judgment final with respect to all
    matters other than determination of the fee amount.
     The trial court, appellate court, and parties all may
    be better off if the appeal from an almost completely
    final judgment can resolve the fee issue as well.

Id. at §3937.

    In White v. New Hampshire Department of Employment
Security, 455 U.S. 445 (1982), the Supreme Court held that
“an outstanding fee question does not bar recognition of a
merits judgment as ‘final’ and ‘appealable,’” and recognized
that “‘piecemeal’ appeals of merits and fee questions are
generally undesirable.” 455 U.S. at 452 n.14. The Court
noted that “district courts have ample authority to deal with
this problem.” Id. The district court prudently exercised
such authority here, declining to proceed with quantification
of the sanctions until the propriety of those sanctions had
been reviewed on appeal. Order Staying Motion to Deter-
mine Fees and Costs, Doc. #375, Mar. 21, 2011 (“a finding in
favor of Plaintiff on appeal could affect Citrix’s entitlement
to attorney fees and costs”).

    Contrary to the majority’s argument, Swint does not
support the panel majority’s ruling, and did not overrule or
supersede Majorette Toys. In Swint, in the wake of succes-
sive raids on a nightclub in Chambers County Alabama, the
plaintiffs sued the Chambers County Commission, along
with three individual police officers, for alleged civil rights
violations. The individual defendants moved for summary
judgment based on qualified immunity, and the commission
moved for summary judgment arguing that the sheriff who
authorized the raids was not an agent of the county com-
mission. Both motions were denied. Invoking the rule that
an order denying qualified immunity is immediately ap-
11                             ORENSHTEYN    v. CITRIX SYSTEMS


pealable before trial under the collateral order doctrine, see
Mitchell v. Forsyth, 472 U.S. 511, 530 (1985), the individual
defendants immediately appealed. Although the denial of
the commission’s motion was not otherwise appealable, the
Eleventh Circuit considered the commission’s appeal under
the doctrine of pendent appellate jurisdiction, and reversed,
granting the commission’s motion to dismiss because the
sheriff was not a policymaker for the county in the area of
law enforcement. The Supreme Court held that the Elev-
enth Circuit should not have allowed the commission to ride
the jurisdictional coattails of the individual defendants’
qualified immunity appeal.

     Swint is distinguished from this case, and from Major-
ette Toys, for at least three reasons. First, as recognized by
the Court, the commission’s appeal in Swint was “unrelated”
to the individual defendants’ qualified immunity appeal,
such that no efficiency would be gained by consolidated
review. 514 U.S. at 51 (“The individual defendants’ quali-
fied immunity turns on whether they violated clearly estab-
lished federal law; the county commission’s liability turns on
the allocation of law enforcement power in Alabama. The
Eleventh Circuit’s authority immediately to review the
District Court’s denial of the individual police officer defen-
dants’ summary judgment motions did not include authority
to review at once the unrelated question of the county
commission’s liability.”).

    Here, by contrast, Mr. Orenshteyn’s appeal is from the
final judgment on the merits of a patent infringement
action, and the sanction is for his prosecution of the merits;
the issues are closely linked and entwined, such that effi-
ciency counsels in favor of consolidated appeal. See Green-
well, 268 F.3d at 491 (“this is one of those cases in which
allowing an interlocutory appeal prevents rather than
produces piecemeal appeals, while if the liability and in-
ORENSHTEYN   v. CITRIX SYSTEMS                                12


demnity issues did not overlap there would be only a limited
economy from deciding them in one rather than two ap-
peals”).

     Second, there was no final judgment in Swint; the quali-
fied immunity decision was only appealable under the
collateral order doctrine, which the Court explained as
follows:

        In Cohen, we held that § 1291 permits ap-
        peals not only from a final decision by which
        a district court disassociates itself from a
        case, but also from a small category of deci-
        sions that, although they do not end the
        litigation, must nonetheless be considered
        “final.” Id. at 546. That small category in-
        cludes only decisions that are conclusive,
        that resolve important questions separate
        from the merits, and that are effectively un-
        reviewable on appeal from the final judg-
        ment in the underlying action. Ibid.

514 U.S. at 41-42. In its decision against pendent appellate
jurisdiction, the Court emphasized that the appealable
decision was only appealable because it fell into that “small
category,” such that the scope of the appeal should not be
enlarged:

    If courts of appeals had discretion to append to a
    Cohen-authorized appeal from a collateral order fur-
    ther rulings of a kind neither independently appeal-
    able nor certified by the district court, then the two-
    tiered arrangement §1292(b) mandates would be se-
    verely undermined.
13                              ORENSHTEYN   v. CITRIX SYSTEMS


514 U.S. at 47. See also 514 U.S. at 49-50 (“a rule loosely
allowing pendent appellate jurisdiction would encourage
parties to parlay Cohen-type collateral orders into multi-
issue interlocutory appeal tickets.”); Wright & Miller, Fed-
eral Practice & Procedure §3937 (“Collateral order doctrine
presents greater challenges to any theory of pendent appeal
jurisdiction.”). Here, by contrast, there was a final judg-
ment on the merits; Mr. Orenshteyn is not seeking to “ap-
pend to a Cohen-authorized appeal,” nor is he asking the
court for a “multi-issue interlocutory appeal ticket.”

   Third, the Court in Swint considered “pendent party”
appellate jurisdiction, and the Court emphasized that point:

     In the instant case, the Eleventh Circuit asserted
     not merely pendent appellate jurisdiction, but pen-
     dent party appellate jurisdiction: The court ap-
     pended to its jurisdiction to review the denial of the
     individual defendants’ qualified immunity motions
     jurisdiction to review the denial of the commission’s
     summary judgment motion.

514 U.S. at 48 n.6. See also 514 U.S. at 51 (“there is no
‘pendent party’ appellate jurisdiction of the kind the Elev-
enth Circuit purported to exercise”); Kaluczky v. City of
White Plains, 57 F.3d 202, 207 (2d Cir. 1995) (“The Supreme
Court has recently cautioned that . . . a claim involving a
‘pendent party’ is an ‘unrelated question’ that cannot be
resolved under pendent jurisdiction. See Swint . . . . How-
ever, the Court did not otherwise narrow the scope of pen-
dent jurisdiction”); Mueller, 576 F.3d 979, 991 (9th Cir.
2009) (quoting this portion of Kaluczky). Here, Mr. Oren-
shteyn seeks merely to appeal the award of attorney fees
ORENSHTEYN   v. CITRIX SYSTEMS                             14


against himself, along with the judgment against himself on
the merits, so there is no pendent party issue. 1

    The issue here is not whether to review a non-final deci-
sion against one defendant, along with a largely unrelated
interlocutory decision against a different defendant appeal-
able only under the collateral order doctrine, but whether to
permit inclusion of the sanction levied against Mr. Oren-
shteyn along with appeal of the final judgment against Mr.
Orenshteyn. The Court in Swint explicitly narrowed its
ruling, stating that it “need not definitively or preemptively
settle here whether or when it may be proper for a court of
appeals, with jurisdiction over one ruling, to review, con-
junctively, related rulings that are not themselves inde-
pendently appealable.” Id. at 50-51. Swint does not decide
the question here, and does not take, or suggest, any posi-
tion that could be construed asoverruling Majorette Toys.

     The majority states that Swint is “widely considered to
have thrown ‘cold water on pendent appellate jurisdiction,’”
op. at 9, citing a case from the Seventh Circuit for this
proposition. The doctrine is alive and well post-Swint. As
explained by the Seventh Circuit itself, “the doctrine clearly
still lives, for it has been invoked by the Supreme Court
since Swint, in Clinton v. Jones, 520 U.S. 681, 707 n.41
(1997), where the Court said that ‘the Court of Appeals
correctly found that pendent appellate jurisdiction over the
issue was proper.’” Greenwell, 268 F.3d at 491.



    1    The majority sees “no basis upon which to limit
Swint only to pendent party jurisdiction.” Maj. op. at 10.
Swint is not limited “only to pendent party jurisdiction,” but
this is one of the three important bases for distinguishing
this case and Majorette Toys from Swint, as explained
supra.
15                             ORENSHTEYN   v. CITRIX SYSTEMS


    Swint did not hold, as the majority contends, that pen-
dent appellate jurisdiction is proper only where the issues
are “inextricably intertwined,” or where review of one is
“necessary to review” the other. Maj. op. at 4. See Gilda
Marx, Inc. v. Wildwood Exercise, 85 F.3d 675, 679 n.4 (D.C.
Cir. 1996) (“While we agree that Swint counsels caution in
the exercise of pendent appellate jurisdiction, we do not
think it meant to prescribe a definitive or exhaustive list of
conditions.”); Wright & Miller, Federal Practice & Procedure
§3937 (“What is needed is a flexible, pragmatic doctrine that
defines the scope of the appeal in the way that best meets
the purposes of the final judgment rule.”).

    The majority’s mistake is apparent when the relevant
language from Swint is shown in context:

     We need not definitively or preemptively settle here
     whether or when it may be proper for a court of ap-
     peals, with jurisdiction over one ruling, to review,
     conjunctively, related rulings that are not them-
     selves independently appealable. . . . The parties do
     not contend that the District Court’s decision to
     deny the Chambers County Commission’s summary
     judgment motion was inextricably intertwined with
     that court’s decision to deny the individual defen-
     dants’ qualified immunity motions, or that review of
     the former decision was necessary to ensure mean-
     ingful review of the latter. Cf. Kanji, The Proper
     Scope of Pendent Appellate Jurisdiction in the Col-
     lateral Order Context, 100 Yale L. J. 511, 530 (1990)
     (“Only where essential to the resolution of properly
     appealed collateral orders should courts extend
     their Cohen jurisdiction to rulings that would not
     otherwise qualify for expedited consideration.”).
     Nor could the parties so argue. The individual de-
     fendants’ qualified immunity turns on whether they
ORENSHTEYN   v. CITRIX SYSTEMS                              16


    violated clearly established federal law; the county
    commission’s liability turns on the allocation of law
    enforcement power in Alabama.

Swint, 514 U.S. at 50-51. Thus the majority’s purported
“Swint tests” derive from one sentence where the Court was
explaining what the parties did not contend. In the imme-
diately preceding sentence, the Court stated that it was not
creating a definitive test. Id. (“We need not definitively or
preemptively settle here. . . .”).

    Further, the citation following the sentence from which
the majority derives its “test” is to a law review article on
“the proper scope of pendent appellate jurisdiction in the
collateral order context,” and the quotation from that article
opines on when courts should “extend their Cohen jurisdic-
tion to rulings that would not otherwise qualify.” The final
sentence in the paragraph emphasizes the lack of relation
between the issues underlying the two appeals. Thus Swint
held, in the pendent party context, that an appellate court
may not extend its Cohen jurisdiction to reach an “unrelated
question.” Id. at 51. This case involves neither Cohen
jurisdiction nor pendent parties, and the issues are closely
related and entwined, as discussed supra. As such, exercis-
ing jurisdiction here would not “contradict[] the central
holding of Swint,” nor would it be “inconsistent with the
standards established in Swint,” as the majority contends.
Maj. op. at 4, 7.

     Courts have not limited pendent appellate jurisdiction
to the conditions of the majority’s test. This court continues
to exercise pendent appellate jurisdiction where the issues
are “closely interrelated factually,” as they are here. See,
e.g., Heliflix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1345
(Fed. Cir. 2000) (“We exercise our discretion to invoke
pendent appellate jurisdiction over the interlocutory grant
17                             ORENSHTEYN    v. CITRIX SYSTEMS


of summary judgment ‘because it is closely interrelated
factually’ to the preliminary injunction.”) (quoting Gerber
Garment Tech, Inc. v. Lectra Sys., Inc., 919 F.2d 683, 686
(Fed. Cir. 1990), and citing Clinton v. Jones, 520 U.S. at 707
n.41, as well as Swint); Intel Corp. v. Commonwealth Scien-
tific & Indus. Research Org., 455 F.3d 1364 (Fed. Cir. 2006)
(“This court, however, has the power to exercise pendent
appellate jurisdiction over other issues,” citing Swint);
Entergis, Inc. v. Pall Corp., 490 F.3d 1340, 1348-49 (Fed.
Cir. 2007) (recognizing that pendent appellate jurisdiction is
available “in appropriate circumstances,” but declining to
exercise it where there was “no overlap or impact between
the issues on appeal”); Akron Polymer Container Corp. v.
Exxel Container, Inc., 148 F.3d 1380 (Fed. Cir. 1998) (re-
versing an unquantified award of attorney fees along with
the closely related merits issue). As this court has stated,
“the major factor in determining whether to exercise this
[pendent appellate] jurisdiction is the extent that review of
the appealable order will involve consideration of factors
relevant to the otherwise nonappealable order.” Procter &
Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 846-47
(Fed. Cir. 2008) (quoting Intermedics, 804 F.2d at 134).

     Nor do the regional circuits limit themselves to the con-
ditions of the majority’s test. The regional circuits continue
to recognize and apply pendent appellate jurisdiction after
Swint in situations such as this, where doing so “furthers
interests of fairness and efficiency,” or where the issues are
“closely related,” “entwined,” or “involve overlapping issues
of law and fact.” See, e.g., Mueller, 576 F.3d at 989-91 (9th
Cir. 2009) (exercising jurisdiction over a partial summary
judgment pendent to a denial of qualified immunity, reason-
ing that a “holding that Rodgers must wait to appeal the
adverse ruling about him not only makes no sense, but it
flies right in the face of efficient judicial administration”);
Greenwell, 268 F.3d at 491 (7th Cir. 2001) (reviewing
ORENSHTEYN   v. CITRIX SYSTEMS                              18


Greenwell’s malpractice claim pendent to a third party’s
indemnity claim, because the issues are “closely related”
and “entwined”); Comstock Oil & Gas Inc. v. Alabama &
Coushatta Indian Tribes, 261 F.3d 567, 571 (5th Cir. 2001)
(“Because the sovereign immunity challenges of the oil
companies and the tribal council members stem from the
same underlying lawsuit and involve overlapping issues of
law and fact, we find that this case presents rare and
unique circumstances sufficient for this court to exercise its
pendent jurisdiction.”); Jungquist, 115 F.3d at 1026 (D.C.
Cir. 1997) (reviewing non-immunity claims pendent to an
interlocutory appeal from a denial of immunity, because
doing so “furthers interests of fairness and efficiency,” and
noting that “the availability of pendent appellate jurisdic-
tion is not limited to circumstances where claims are ‘so
closely related’ that review of the former is necessary to, or
will dispose of, review of the latter”); In Re Tutu Wells
Contamination Litigation, 120 F.3d 368, 382 (3rd Cir. 1997)
(exercising pendent party appellate jurisdiction and explain-
ing that the “doctrine of pendent appellate jurisdiction, in
its broadest formulation, allows an appellate court in its
discretion to exercise jurisdiction over issues that are not
independently appealable but that are intertwined with
issues over which the appellate court properly and inde-
pendently exercises its jurisdiction”); Brennan v. Township
of Northville, 78 F.3d 1152, 1158 (6th Cir. 1996) (reviewing
a partial summary judgment pendent to a denial of qualified
immunity, “in the interest of judicial economy”). These
cases show that exercise of pendent appellate jurisdiction is
not limited to situations where the issues are “inextricably
intertwined,” or “necessary to review,” as the majority
contends.

    The majority is incorrect in stating that the circuits “are
in general agreement that an unquantified award of attor-
ney fees does not usually warrant the exercise of pendent
19                             ORENSHTEYN   v. CITRIX SYSTEMS


jurisdiction.” Maj. op. at 7. Numerous courts, including this
court, have reviewed unquantified fee awards since Swint,
or recognized the power to do so. See, e.g., Akron Polymer,
148 F.3d 1380 (Fed. Cir. 1998) (discussed supra, reviewing
an unquantified fee award pendent to a judgment of unen-
forceability for inequitable conduct); Thornton, 136 F.3d at
454 (5th Cir. 1998) (reviewing an unquantified award of
attorney fees pendent to a Rule 11 suspension sanction,
noting that “pendent review promotes judicial economy”); In
re Dyer, 322 F.3d at 1187 (9th Cir. 2003) (reviewing an
unquantified sanctions order along with the merits because
“[d]elaying review of the sanctions order would result in
piecemeal litigation”); Gilda Marx, 85 F.3d at 678 (D.C. Cir.
1996) (recognizing that “[r]eview of the [unquantified]
attorney’s fee order is certainly within our Article III
power,” but declining to exercise its discretion to review the
unquantified award pendent to a final judgment on the
merits where the “scope of the fee award” was “not entirely
clear,” such that the court was “[w]ithout a reason to believe
that the interests of judicial economy and fairness to the
parties would be served”); Hibiscus Associates Ltd. v. Bd. Of
Trs. Of the Policemen & Firemen Ret. Sys., 50 F.3d 908, 921-
22 (11th Cir. 1995) (“The amount of the fee award has not
been determined . . . . Although we have discretion as an
exercise of pendent appellate jurisdiction to review the issue
. . . we decline to exercise that discretion here.”); M & C
Corp. v. Erwin Behr GmbH & Co., KG, 289 F. App’x. 927,
932 (6th Cir. 2008) (nonprecedential) (exercising pendent
appellate jurisdiction over an unquantified award of litiga-
tion expenses).

     In contrast with the cases selected by the panel major-
ity, Mr. Orenshteyn’s appeal is from the final judgment on
the merits of the patent, and the sanction is for his prosecu-
ORENSHTEYN   v. CITRIX SYSTEMS                            20


tionof the merits. Majorette Toys is controlling precedent, 2
and supports accepting appeal of the sanction along with
appeal of the final judgment, for the district court’s final
judgment presents these issues for appeal.

    The panel majority has chosen to accept only the portion
of the appeal relating to the final judgment of invalidity,
and to separate and remand the portion directed to the
sanction, for further proceedings that may become irrele-
vant. In the prior appeal of this case, after the district
court’s summary judgment on the issue of infringement and
the initial award of this sanction, a panel of this court
commented that the district court awarded sanctions be-

    2   I take note of the recent decision in Falana v. Kent
State Univ., 669 F.3d 1349 (Fed. Cir. 2012), where a panel of
this court departed from Majorette Toys. However, the
earlier precedent controls until it is overruled en banc. See
Newell Cos. v. Kennedy Mfg. Co., 864 F.2d 757, 765 (Fed.
Cir. 1988) (“Where there is direct conflict, the precedential
decision is the first.”). Further, Falana erroneously stated
that the “appeal in Majorette Toys was based on 28 U.S.C.
§1292,” attempting to distinguish Majorette Toys on the
ground that jurisdiction in Falana was based on §1295
instead of §1292. Id. at 1361-62. This distinction fails, as
jurisdiction in Majorette Toys was based on §1295. See
Johannsen, 918 F.2d at 162 (“the judgment in Majorette
Toys was actually a ‘final decision’ appealable under §1295,
and the court’s discussion of §1292(c)(2) was not necessary
to its holding on jurisdiction”). Falana also stated that
“Swint supersedes Majorette,” while ignoring this court’s
post-Swint decision in Akron Polymer, discussed supra,
where this court again reviewed an unquantified award of
attorney fees along with a final judgment on the merits.
Finally, “[w]hether an appellate court exercises this ‘doc-
trine of pendent jurisdiction at the appellate level’ is a
matter of discretion.” Intermedics, 804 F.2d at 134. Al-
though the court in Falana chose not to exercise this discre-
tion, that does not bar us from doing so when sound
discretion so counsels.
21                              ORENSHTEYN    v. CITRIX SYSTEMS


cause “this case was not litigated well by Orenshteyn and
his counsel,” Orenshteyn v. Citrix, 341 F. Appx. at 626. The
prior panel vacated that award of sanctions, with the admo-
nition that “the amount [of extra cost for multiplication of
proceedings] would appear to be a fraction of the total
litigation cost.” Id. at 622. The present sanctions are for
the same transgressions, and will again require review of
the merits of the patent counts and litigation procedures.
No advantage or convenience appears in separating these
aspects, and every advantage and convenience in combining
them.

    As now postured by the panel majority, this court will
review only the summary judgment of patent invalidity.
Meanwhile, the district court will be ordered to return to the
case and perform the accounting – without knowing the
views of the Federal Circuit on the foundation of the sanc-
tion or its scope. Judicial efficiency is adversely affected not
only for the Federal Circuit, but also for the district court.
However, this burden is avoided if this court simply follows
precedent and reviews the appealed sanction along with the
appealed final judgment.

    But for the recent aberration in Falana, see n.2 supra,
Federal Circuit precedent has been consistent. In Majorette
Toys, and in Akron Polymer, the court received appeal of a
final judgment on the merits, and accepted the accompany-
ing appeal of the sanction although the monetary amount of
the sanction had not been determined. And where the
unquantified sanction was the only issue on appeal, as in
View Engineering and Special Devices, the court held that
the issue was not ripe for appeal. Precedent and efficiency
support acceptance of this appeal of the merits together
with the sanction.
