N.J. Inmate Properly Barred From Suing for Patent Infringement

Written September 1, 2020

The US Court of Appeals for the Federal Circuit on August 20, 2020, held that patent owner Walter A. Tormasi lacked capacity to sue computer company Western Digital Corp. because Tormasi was barred from conducting business as a New Jersey inmate. Tormasi v. W. Dig. Corp., Fed. Cir., No. 20-1265, unpublished 8/20/20.

While he was an inmate in the New Jersey state prison system, Walter A. Tormasi applied for and obtained a patent relating to storing and retrieving information on a hard drive. The district court dismissed his infringement suit, finding he violated the prison system’s rule barring inmates from operating a business without administrator approval.

The Federal Circuit affirmed because the suit “is in furtherance of operating an intellectual property business for profit, and, therefore, prohibited under the ‘no-business’ rule.” Judge Kara F. Stoll dissented, arguing the prison’s administrative rule doesn’t have any bearing on an inmate’s capacity to sue in court.

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