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Here's a bizarre case:
the Federal Circuit affirmed a district court ruling that patent owner Walter A. Tomasi cannot sue anyone for patent infringement because he is serving a life sentence in New Jersey prison for murder, and lacks capacity to sue
http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1265.OPINION.8-20-2020_1639787.pdf
the Federal Circuit affirmed a district court ruling that patent owner Walter A. Tomasi cannot sue anyone for patent infringement because he is serving a life sentence in New Jersey prison for murder, and lacks capacity to sue
http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1265.OPINION.8-20-2020_1639787.pdf
Tomasi was convicted in 1998 for murdering his mother in 1996, when he was 18 years old. He shot her in the family driveway with a 9mm handgun.
He was sentenced to life in prison, eligible for parole beginning in 2026 https://patch.com/new-jersey/bridgewater/martinsville-man-who-killed-his-mother-get-new-hearing-0
He was sentenced to life in prison, eligible for parole beginning in 2026 https://patch.com/new-jersey/bridgewater/martinsville-man-who-killed-his-mother-get-new-hearing-0
In the meantime, somehow Tomasi filed a patent application in 2004 as sole inventor. The patent claims a type of computer hard drive—sophisticated for a murderer without a high school diploma.
It's possible he was in some vocational program in prison?
https://patents.google.com/patent/US7324301B2/en
It's possible he was in some vocational program in prison?
https://patents.google.com/patent/US7324301B2/en
It appears from the signatures in the file that Tomasi filed and prosecuted his patent application by himself without a lawyer, although the file also names this lawyer John Kane as Tomasi's agent
His patent application was handled quite competently. https://www.linkedin.com/in/john-kane-a799914
His patent application was handled quite competently. https://www.linkedin.com/in/john-kane-a799914
The patent issued in 2008
Tomasi, by correspondence, organized a holding company, named himself CEO, and transferred title to the patent to the corporation
According to the Fed. Cir. opinion, his prison forbids inmates from conducting business for-profit without prison approval
Tomasi, by correspondence, organized a holding company, named himself CEO, and transferred title to the patent to the corporation
According to the Fed. Cir. opinion, his prison forbids inmates from conducting business for-profit without prison approval
Despite discipline from the state prison, Tomasi continued to operate the company, and he set up a contingency where the company would return interest in the patent to him under some circumstances
In 2009, and again in 2019, he assigned himself title in the patent
In 2009, and again in 2019, he assigned himself title in the patent
In Feb. 2019 he asserted the patent, and the defendant Western Digital Corp. argued Tomasi "lacks capacity" to sue because New Jersey law forbids an inmate from for-profit business activity. Tomasi argued he's simply asserting a personal IP right.
The Fed. Circuit panel agrees with the district court: Tomasi lacks capacity to sue.
Transferring the patent from a holding company to himself "merely repackages business objectives" so he may sidestep the no-business rule
Transferring the patent from a holding company to himself "merely repackages business objectives" so he may sidestep the no-business rule
In a bit of Erie doctrine analysis (unusual at the Fed. Circuit), the panel applies New Jersey law and concludes that under NJ law he violated the "no business" rule. (The panel says Tomasi waived the argument that he should be allowed to sue *regardless* the no-business rule.)
The panel is persuaded that pursuing a patent application qualifies as "commencing or operating a business or group for profit," and further points to Tomasi's activities attempting to preserve the patent's commercial value
Kara Stoll dissented in this case. She argues that whether Tomasi violated NJ's no-business rule has no bearing on capacity to sue. Tomasi is over 18 and possesses mental capacity and that should be the end of the inquiry
(Stoll's argument strikes me as correct)
(Stoll's argument strikes me as correct)
