Invention of a Slave: 2021 Redux

by Dennis Crouch

Tormasi v. Western Digital, Docket No. 20-1396 (Supreme Court 2021)

Walter Tormasi is a prisoner in the New Jersey state prison system. He is serving a life sentence for murdering his mother when he was 16 years old after apparently receiving encouragement from his father, Attila.

Tormasi is also a patentee.  His U.S. Patent No. 7,324,301 covers a computer hard-drive that allows for “simultaneously and independently” reading and/or writing on different carrier surfaces within the drive.   The patent looks fairly sharp.  Although Tormasi began the prosecution pro se, he later worked with John Kane, a Trenton-based patent attorney, to push through to issuance.

In 2019 Tormasi sued Western Digital in the N.D. Cal — asserting that the defendant’s dual-actuator drives infringed Tormasi’s patents. Rather than reaching the merits, the district court dismissed the case on procedural grounds.  The district court ruled that Tormasi lacked the capacity to sue and the Federal Circuit then affirmed.  The majority opinion is per curiam from Judges Wallach and Chen.  Judge Stoll wrote in dissent.

Capacity to Sue: Under the Federal Rules of Civil Procedure, a plaintiff’s capacity to sue is determined “by the law of the individual’s domicile.”  For Tormasi, that is New Jersey.  New Jersey has a statute on point: “Every person who has reached the age of majority . . . and has the mental capacity may prosecute or defend any action in any court.” N.J. STAT. ANN. § 2A:15-1 (2013).  However, New Jersey’s Prison Administrative Code sets forth regulations that prohibit prisoners from “operating a business … without the approval of the Administrator” N.J. ADMIN. CODE § 10A:4-4.1.   Tormasi does not have the Adminstrator’s approval.  The courts found that this non-statutory administrative rule was sufficient to limit the state statute — superseding his right to file a lawsuit in his personal capacity.  It seems to me that rule eliminating a party’s right to file a civil lawsuit probably should have been a bit more direct.

Tormasi represented himself pro se at the district and appellate court levels. However, Thomas Lewry and his team at Brooks Kushman recently took-up the case and have petitioned for Supreme Court review.

Three questions presented:

1. Does imprisonment (1) forfeit a patent owner’s right not to be deprived of personal property without due process of law and (2) render a person wholly without equal protection of the law?

2. Does Lewis v. Casey , stating that the right of access to the courts “does not guarantee inmates the wherewithal to transform themselves into litigating engines,” enable state agencies to affirmatively eliminate an inmate’s access to court on general civil matters?

3. The patent statute authorizes patent owners to enforce their constitutionally recognized  exclusionary rights in federal court. Did the lower courts create a dangerous slippery slope that (1) establishes a mechanism by which states can, via an administrative rule, nullify federally granted statutory rights and (2) oppresses prisoners by depriving them of property without redress?

SupremeCourtCertiorariPetition (Appendix) (Fed. Cir. Decision)

I would add a fourth question focusing on the particular patent statute: 35 U.S.C. § 281, which expressly provides a remedy for patent infringement to the patentee: “A patentee shall have remedy by civil action for infringement of his patent.” As interpreted by the Federal Circuit, the rules of procedure are in conflict with this statute and one of the two must bend.

Still, perhaps the answer comes within the 13th Amendment’s pronouncement that slavery is still permitted within the United States “as a punishment for crime.”

At the Supreme Court, responsive briefing is due from Western Digital by May 28, 2021.  Joining Lewry on the brief are REZA ROGHANI ESFAHANIDUSTIN ZAK, and LEROY ASHLEY.

NJ Law Limiting Patentee’s Capacity to Sue Upheld on Appeal

Invention of a Slave and the Ongoing Movement For Equal Justice

Tags: Supreme Court, Law, United States, New Jersey, Patent, Western Digital, Lewis, Trenton, Chen, Casey, Federal Circuit, Stoll, Wallach, John Kane, New Jersey New Jersey, Brooks Kushman, Walter Tormasi, Tormasi, Dennis Crouch Tormasi, Western Digital Docket No, Attila Tormasi, Thomas Lewry, DUSTIN ZAK


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