Tormasi v. Western Digital Corp.

Background

Walter A. Tormasi sued Western Digital Corp. for allegedly infringing U.S. Patent No. 7,324,301, titled “Striping Data Simultaneously Across Multiple Platter Surfaces.” He alleged that Western Digital made, sold, distributed, or imported hard-disk drives containing dual-stage actuator systems covered by several patent claims.

Western Digital moved to dismiss. It argued that Tormasi lacked standing because he did not hold title to the patent, lacked capacity to sue because he was an inmate prohibited from conducting business, and had not plausibly alleged willful patent infringement. Tormasi also filed related motions concerning evidence and Western Digital’s response.

Court’s analysis

The court did not decide the standing issue. It assumed, for purposes of its analysis, that Tormasi might have standing but held that he lacked capacity to sue under Federal Rule of Civil Procedure 17(b). That rule generally determines an individual’s capacity to sue under the law of the individual’s domicile. The court stated that Tormasi was domiciled in New Jersey.

The court relied on a New Jersey regulation that prevents inmates from starting or operating a business or nonprofit enterprise for profit without approval from the appropriate administrator. The court concluded that Tormasi’s patent-infringement suit was part of an effort to benefit from or monetize his patent assets. It noted that Tormasi had previously assigned his patent interests to Advanced Data Solutions Corp. and later submitted an assignment transferring the patent rights back to himself. The court found that this contradicted his earlier representation and suggested that he sought to benefit directly from the patent, including through the $5 billion in compensatory damages alleged in the complaint.

The court rejected Tormasi’s argument that the regulation improperly interfered with his personal right to access the courts. It distinguished the constitutional right of access to the courts from a claimed right to conduct business while incarcerated. Because the court resolved the case based on lack of capacity, it did not reach Western Digital’s arguments concerning willful or indirect infringement under Rule 12(b)(6), the rule governing dismissal for failure to state a legally sufficient claim.

Disposition

The court GRANTED Western Digital’s motion to dismiss with prejudice because Tormasi lacked capacity to sue under Rule 17(b). The court DENIED AS MOOT docket numbers 27 and 29, DENIED docket number 24, and directed the clerk to terminate the case.