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

22 thoughts on “Invention of a Slave: 2021 Redux

  1. 10

    It is unlikely that the Supreme Court will accept review because, as others have pointed out, the panel decision rested on New Jersey state law. Even if you think the panel erred in applying New Jersey law, the Supreme Court does not review questions of that nature. The federal issues (including the one added by Dennis) seem fanciful and insubstantial, but the petitioner cannot even get there without first overcoming the panel’s finding that he abandoned constitutional arguments during his Federal Circuit appeal. I suspect that Western Digital will respond by pointing out the long history of nearly a decade of federal court litigation involving this inmate and his patents, which includes a Third Circuit decision from a decade ago upholding the warden’s right to seize unfiled patent applications based on the same rule against running a business from jail. Complex issues of whether an issue was even preserved for appeal are generally a death knell to Supreme Court review.

    I think where the Federal Circuit may have gone astray was simply deciding the state law issue. If the capacity of this inmate to file a civil lawsuit was truly an unresolved issue of state law, subject to reasonable views on both sides, the appeals court could have certified the question to the New Jersey Supreme Court to give that court the opportunity to address the question. It’s possible that this option didn’t even occur to the Federal Circuit judges, as they rarely deal with complex state law issues like this.

    1. 10.1

      Thanks for bringing up a certified question. I had meant to mention that earlier, but then it slipped my mind. You’re correct on that point I think, and it doesn’t seem like CAFC even contemplated doing that. Savvy appellate counsel might have brought it to CAFC’s attention, but again, Tormasi was pro se all the way. Although, even if the majority considered it, that would just delay ruling against him, which they probably wanted to avoid. There’s no reason the dissent couldn’t have suggested it though. Actually—waiver aside since Tormasi clearly never brought it up—a potentially more fruitful issue for the cert petition would have been a CQ. In contrast to his 3 QPs, that does raise a legitimate, non-frivolous federal question.

      That said, a CQ creates delay. Maybe it doesn’t prejudice Tormasi since he can literally wait for years, but it certainly prejudices WD. I also don’t think the question is particularly important and it wouldn’t be fair to burden the NJ SC with deciding it—especially when they’re already quite burdened with all his criminal appeals.

      In the end, you could say that none of Tormasi’s arguments in this case held Wa(l)ter.

      1. 10.1.1

        Now I’m replying to my own replies. This case has clearly become an obsession.

        I wanted to add two more thoughts on CQ. (1) Just the apparent lack of NJ case law suggests it’s not an important question worthy of a CQ. (2) Relatedly, the relevant NJ officials could have intervened, at CAFC at least, but they didn’t.

        Finally, if Tormasi ever does end up turning a profit on the patent, I assume he’ll need to cough up some of the proceeds to satisfy criminal restitution (the victim is obviously dead but maybe her estate or surving family) and/or fines?

  2. 9

    Two parting observations on this case:

    (1) This isn’t the only appeal Tormasi lost recently. He also failed to overturn his conviction or sentence, yet again. But apparently he’s only got another 5 years until he starts being eligible for parole. And based on his prison record—the nature of his crime aside—he may at least have a shot at receiving it. The fact that he’s an enterprising businessman might even help there. If he gets parole on the first try, he’ll be 47, which isn’t the end of the world and still time to follow his pursuits.

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    (2) I was a little surprised WD not only plans to respond, but also requested additional time(!). You’d think the petition is so hopeless that it could be outright ignored. However, one reason for the response and extension is “factual issues and record references” that WD intends to “correct”. So I’m interested to see what happens there.

  3. 8

    HTH do you get to slavery? Did someone force Tormasi to make his invention? Was it Western Digital? No? Then “slavery” is non sequitur.

    Did Tormasi seek the administrator’s permission? That’s not mentioned, but seems pretty important if he’s arguing due process violation but he didn’t avail himself of the process that exists.

    1. 8.1

      I just assumed the slavery thing was a play on master/slave for hard drives, because that’s the patent subject matter. But you’d have to ask Prof. Crouch to be sure.

      To your questions, look at FN6. It is in fact mentioned. Tormasi claimed to have permission, but the argument was held to be waived in any event.

  4. 7

    If I recall correctly, even prisoners have 5th and 14th Amendment Due Process rights to a hearing. The judge hearing the patent case probably does not have much background with prisoner rights, but they exist. (The advantage of an education from New Jersey where the unofficial state theme song is the intro music from the Sopranos). I think the Supremes are going to smack this judge’s decision down hard.

    1. 6.1

      He was born in Hungary and moved to NJ later. See the obit link below. (Not surprisingly, it doesn’t mention wayward son Walter among his surviving kin.) Per the Wikipedia link below, Attila is a popular name there and in some other E. European countries. Also per Wikipedia, while Hungarian national legend holds that they descended from the earlier nomadic Huns—of Attila the Hun fame—that’s apparently not true.

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  5. 5

    Does the exception of the 13th amendment apply to both terms before the comma, or just the latter term? i.e. involuntary servitude may exist as punishment for a crime, but slavery is shall not exist under any circumstance?

    Owning and enforcing a patent is not a business.

    1. 5.1

      Owning and enforcing a patent is not a business.

      Apparently, the facts of this case point out that the first attempt at enforcement was tied to a business.

      The facts here are that a business still owns the patents being asserted.

      The second attempt did not pass the sniff test because “personal” is an odd term to use to try to describe a business asset, which by its nature is simply not “personal.”

      Unfortunately, the notion of a patent as an item of personal property has been denigrated of late, and I tend to doubt that this case provides a vehicle for rectifying that — although I would not mind too much being incorrect in this instance.

  6. 4

    The petition is a valiant effort. I think the Federal Circuit got this one wrong, but only because it got New Jersey law wrong. Judge Stoll’s dissent argues convincingly (to me) that the New Jersey statute doesn’t actually deprive Tormasi of capacity to sue. It prohibits prisoners from running businesses without the warden’s permission, charges the warden with enforcing it, and gives the warden a few different ways to enforce. It’s not an automatic capacity-extinguishing provision that defendants and courts can use to knock out lawsuits. FRCP 17 makes capacity to sue a question of state law. The Federal Circuit got state law wrong. That’s not something the Supreme Court can fix, if I remember Michigan v. Long correctly.

    Another problem is that this is a one-off decision. Unless I missed it, the petition doesn’t say that any other prisoner has been kicked out of court based on the New Jersey statute or a similar statute. There’s only Tormasi in what’s hopefully an aberrational case. The Supreme Court sometimes summarily reverses in one-off cases, but this doesn’t seem like a likely candidate. Man serving a life sentence for murdering his mother has his patent case dismissed on dubious state-law grounds?

    Tormasi’s lawyers shrewdly make constitutional arguments and argue that this case has broad importance because it sets up a slippery slope. But the Federal Circuit rejected the constitutional arguments on waiver grounds, without reaching the merits. Because of that, there’s no reasoned opinion from the Federal Circuit to review on these issues. I’m highly skeptical of the constitutional arguments.

    Dennis’s argument is interesting, and would seemingly solve the NJ state law problem by making this a case about 35 USC 281. I’d ask, though: (1) is this a preemption argument? (2) is the argument preserved? (3) is it really plausible that 35 USC 281 establishes an absolute right to a day in court for infringement, as opposed to simply setting up a cause of action? It’s true that the statute says “A patentee shall have remedy by civil action for infringement of his patent,” but “shall,” no matter what? Are filing fees in conflict with 281? State laws about the ability of underage persons to sue on their own? Local counsel requirements? State laws about what happens when someone’s declared mentally incompetent?

    I think Mr. Tormasi was wronged in this case, but it’s hard for me to picture how the Supreme Court would fix it.

    1. 4.1

      As I said below, I agree there at least seems to be a colorable argument on the state law point. MI v. Long was about something quite different though—appeals from state courts of last resort potentially presenting both federal and state law issues that may be intertwined. This is just a case that in its essence turns on a fairly insignificant state law question. Just by itself, that would be ample reason for SCOTUS to deny review. But there are some confounding waiver issues too, as you pointed out in ¶ 3—no surprise when you have a case litigated pro se. So this petition is doomed many times over.

      Paragraph 2 seems to suggest that a “circuit split” over this issue might help Tormasi. That doesn’t seem right. I don’t think it’s even possible to have a split over a state-law question that by definition only affects one state. Circuit splits are disagreements over the application of federal law. Even if you happened to have a very similar provision in another state, I think it still wouldn’t matter. That’s because there’s no requirement that two different states each interpret their own law in the same way. FWIW though, it seems like NJ may actually be unique in this regard. A little quick research suggests other jurisdictions are fairly loose on inmate businesses as long as they don’t involve entering into new contracts while imprisoned. (The Quora discussion even seems to presage what happened in Tormasi’s own case!)

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      I wouldn’t say the constitutional arguments are “shrewd” so much as desperate, because a petition that only raises state law questions is pretty much deficient on its face. You’re right to be skeptical though. But I don’t really fault counsel because they’re probably having a little fun and no matter what they put forward, failure is a near certainty. Also, I don’t think it’s correct to say CAFC “rejected the constitutional arguments on waiver grounds”. The waiver analysis dealt with the state law issues. FN7 of the decision says Tormasi expressly abandoned his constitutional arguments, whatever they were, and nothing in the majority or dissenting opinions seems to contradict that.

      Last, I don’t agree with Prof. Crouch’s characterization, especially as worded in the Twitter survey, that this case sets up an epic clash between patent rights and state law/regulations. There’s certainly nothing special about the patent statutes granting a cause of action to enforce the federal right—and I agree with NtGoJR that it is merely a CoA-providing statute. I’m sure pretty much all other federal laws that create rights have similar provisions granting CoAs. Moreover, a patent action is subject to the restrictions of FRCP 17 just like every action on a federal right. And FRCP 17 expressly incorporates state law to determine capacity. Finally, there’s no argument that the NJ regulation improperly targets patent actions—it applies to all business activities. So I guess I just don’t see what the problem is here.

      Ironically, from what I can tell, Tormasi did get his day in court—multiple courts even. He was able to file the initial complaint, in NDCAL no less. And he even got to argue against the dismissal—pro se—to CAFC. His only complaint is that his case didn’t survive a MtD. But that happens on a fairly regular basis and isn’t usually grounds for claiming denial of access to the courts.


          Thanks to you and anyone else who took the time to consider them. Doing that might seem a bit like involuntary servitude itself!

      1. 4.1.2

        Perhaps I should try to choose words more precisely in blog comments… I don’t think we disagree on any of this.

        1. I take Michigan v. Long to stand for the principle that the Supreme Court doesn’t consider questions that rest on state law. If there’s an independent state law ground that adequately supports the judgment, the court won’t take the case. The actual principle may be narrower or more specific, but my broader point is the Federal Circuit’s error was getting NJ law wrong, not federal law, and that makes cert unlikely here.

        2. I don’t mean to suggest a circuit split. Only that a lot of states have similar laws, and sometimes broader patterns in the way federal courts apply those laws can support a cert petition. So, here, the case for cert might be stronger if it turned out that a bunch of other states have functionally similar laws about prisoners running businesses and if there was a nationwide pattern of federal courts reading those laws as extinguishing a prisoner’s capacity to sue under FRCP 17. If that happened to be true here, it might help with cert, but it seems not to be true.

        3. By “shrewd,” I mean only that Tormasi’s counsel seem to understand what they’d need to do to get cert granted and seem to have chosen the best available arguments to that end.

        4. By “waiver” I mean the discussion in footnote 7. Maybe I’m conflating waiver of one argument with abandonment of the other; the broader point is that the Federal Circuit rejected the arguments on non-preservation grounds of some kind, which makes the merits issue unattractive for cert.

        5. The one thing I disagree with is the “ironically” paragraph. Getting one’s “day in court” can mean a bunch of different things. I think Tormasi fairly uses that expression here. By dismissing his case on legally erroneous (Tormasi argues) grounds at the threshold, the district court denied him his day in court on his patent infringement claims. WD wasn’t required even to answer the complaint. Yes, he got an appeal, but the CAFC affirmed the district court’s order denying him his day in court. He got a “day in court” about whether he should have a “day in court” on the merits of his infringement claims, but I don’t think that’s ironic or satisfactory if he’s right about how the NJ statute works.

  7. 3

    “Where there’s a will, there’s a way.”

    — Courtesy of your friendly neighborhood CAFC

    Cancel culture.


  8. 2

    A regulation depriving personal jurisdiction that is inconsistent with statutes would seem to be tempting cert fare for the current members of the Sup. Ct. who are demonstrably eager to attack administrative law scope in general?

    1. 2.1

      PJ isn’t at all raised by this case. The regulation at issue was interpreted to limit capacity to sue. It seems like there’s a colorable argument the interpretation is wrong as a matter of NJ state law. Whether the argument was also preserved or not is a separate question. But even if the interpretation was correct, regulations limiting prisoner lawsuits outside the civil rights context are on quite sturdy legal footing as I understand it. (Note that even for civil rights, some limitations are acceptable too, such as the PLRA.)

      So, just on that basis, that at its core the case turns on fairly mundane questions of state law interpretation, I doubt it even presents a federal issue for SCOTUS to consider. And with regard to admin law specifically, I don’t recall SCOTUS conservatives being particularly hostile to state admin agencies; that’s usually reserved for federal ones. This case also involves prisons, and the conservatives—i.e., the current majority—have typically been quite friendly and deferential to prison administrators.

  9. 1

    Why can’t the Federal Circuit resist meddling with core fundamentals of jurisprudence? This has nothing to do with NJ regulations on transacting business. If Tormasi owns the patent he has standing. If some other entity owns the patent he does not have standing. Who owns the patent?

    Mr. Tormasi’s attempt to file this lawsuit as a personal action merely repackages his previous business objectives as personal activities so he may sidestep the “no business” regulation. Because these actions are a mere continuation of his prior business activities, we find that here, as in Mr. Tormasi’s previous lawsuit, Mr. Tormasi’s characterization of his suit as personal, as opposed to related to business, to be without merit.

    1. 1.1

      I suggest you review the CAFC decision. Being short, it won’t occupy much of your time. If you do, you’ll see the question of standing was expressly reserved. CAFC decided the case on capacity grounds. That’s a distinct issue from standing.

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