Case: 20-1265   Document: 40     Page: 1   Filed: 08/20/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

                WALTER A. TORMASI,
                  Plaintiff-Appellant

                            v.

        WESTERN DIGITAL CORPORATION,
               Defendant-Appellee
             ______________________

                       2020-1265
                 ______________________

    Appeal from the United States District Court for the
 Northern District of California in No. 4:19-cv-00772-HSG,
 Judge Haywood S. Gilliam, Jr.
                  ______________________

                Decided: August 20, 2020
                 ______________________

    WALTER A. TORMASI, Trenton, NJ, pro se.

    ERICA WILSON, Walters Wilson LLP, Redwood City,
 CA, for defendant-appellee. Also represented by ERIC
 STEPHEN WALTERS; REBECCA L. UNRUH, Western Digital
 Corporation, Milpitas, CA.
                 ______________________

    Before WALLACH, CHEN, and STOLL, Circuit Judges.
Case: 20-1265       Document: 40    Page: 2   Filed: 08/20/2020




 2                           TORMASI V. WESTERN DIGITAL CORP.




             Opinion for the court filed PER CURIAM.
         Dissenting opinion filed by Circuit Judge STOLL.
 PER CURIAM.
      Appellant Walter A. Tormasi (“Tormasi”) sued Appel-
 lee Western Digital Corporation (“WDC”) in the U.S. Dis-
 trict Court for the Northern District of California (“District
 Court”), alleging infringement of claims 41 and 61–63 (“the
 Challenged Claims”) of U.S. Patent No. 7,324,301 (“the ’301
 patent”). A.A. 13–25 (Complaint). 1 The District Court is-
 sued an order concluding that Mr. Tormasi lacked capacity
 to sue under Federal Rule of Civil Procedure (“FRCP”)
 17(b), but did not “reach the standing issue.” See Tormasi
 v. W. Digital Corp., No. 19-CV-00772-HSG, 2019 WL
 6218784, at *2 (N.D. Cal. Nov. 21, 2019) (Order); see id. at
 *2–3. For the limited purpose of reviewing the District
 Court’s determination as to whether Mr. Tormasi has ca-
 pacity to sue, we have jurisdiction pursuant to 28 U.S.C.
 § 1295(a)(1). 2 We affirm.




     1   “A.A.” refers to the appendix submitted with
 Mr. Tormasi’s brief. “S.A.” refers to the supplemental ap-
 pendix submitted with WDC’s brief.
     2   The District Court exercised jurisdiction under 28
 U.S.C. § 1338, accordingly we have jurisdiction. See Tor-
 masi, 2019 WL 6218784, at *2 (discussing the ’301 patent);
 J.A. 13–14; see Apotex, Inc. v. Thompson, 347 F.3d 1335,
 1342 (Fed. Cir. 2003) (“[W]e have appellate jurisdiction if
 the district court’s original jurisdiction was based in part
 on section 1338, as determined by the plaintiff's well-
 pleaded complaint.” (citing Holmes Grp., Inc. v. Vornado
 Air Circulation Sys., 535 U.S. 826, 829 (2002)).
Case: 20-1265    Document: 40       Page: 3   Filed: 08/20/2020




 TORMASI V. WESTERN DIGITAL CORP.                           3



                        BACKGROUND 3
      Mr. Tormasi is an inmate in the New Jersey State
 Prison (“NJSP”), A.A. 133 (Declaration of Mr. Tormasi),
 and describes himself as an “innovator and entrepreneur,”
 A.A. 13. NJSP maintains a “no-business” rule, which pro-
 hibits inmates from commencing or operating a business
 without prior approval from the Administrator. N.J.
 ADMIN. CODE § 10A:1-2.1 (2010); id. § 10A:1-2.2 (Adminis-
 trator “means an administrator or a superintendent who
 serves as the chief executive officer of any State correc-
 tional facility within the New Jersey Department of Cor-
 rections.”).     While imprisoned, and without the
 Administrator’s prior approval, Mr. Tormasi formed “an in-
 tellectual-property holding company[,]” A.A. 134, Ad-
 vanced Data Solutions Corp. (“ADS”), A.A. 101 (Certificate
 of Incorporation). Mr. Tormasi appointed himself as “di-
 rector,” “Chief Executive Officer, President, and Chief
 Technology Officer” of ADS. A.A. 134; see A.A. 132–44.
     In January 2005, Mr. Tormasi filed U.S. Patent Appli-
 cation No. 11/031,878 (“the ’878 application”), which ulti-
 mately issued in January 2008, as the ’301 patent. 4
 A.A. 34. In early 2004 Mr. Tormasi, as ADS Director,


     3    Because Mr. Tormasi appeals the dismissal of his
 Complaint pursuant to FRCP 12(b)(6), the facts recited
 herein draw on Mr. Tormasi’s Complaint, “as well as other
 sources courts ordinarily examine when ruling on [FRCP]
 12(b)(6) motions to dismiss, in particular, documents incor-
 porated into the [C]omplaint by reference . . . .” Tellabs,
 Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322
 (2007).
      4   Entitled “Striping Data Simultaneously Across
 Multiple Platter Surfaces,” A.A. 34, the ’301 patent “relates
 to the art of dynamically storing and retrieving information
 using nonvolatile magnetic random-access media, specifi-
 cally hard disk drives,” A.A. 36.
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 4                          TORMASI V. WESTERN DIGITAL CORP.




 adopted resolutions that transferred Mr. Tormasi’s rights
 in the ’878 application for all shares of stock in ADS.
 A.A. 134. However, Mr. Tormasi also asserts that in Feb-
 ruary 2005, he contingently assigned his complete right, ti-
 tle, and interest in the ’878 application “and its foreign and
 domestic progeny to ADS.” A.A. 95; see A.A. 94–95 (Assign-
 ment). In May 2007, NJSP intercepted documents from
 Mr. Tormasi related to ADS, and determined that he “cir-
 cumvented the procedural safeguards against inmates op-
 erating a business without prior approval.” A.A. 146
 (Disciplinary Report). NJSP “warned” him that “continued
 involvement with ADS” would “subject[] [him] to further
 disciplinary action.” A.A. 136. Despite this warning,
 Mr. Tormasi continued his involvement with ADS by exe-
 cuting a corporate resolution that contingently transferred
 the ’878 application from ADS to himself, in June 2007.
 A.A. 136–37. Mr. Tormasi explained that the purpose of
 the contingent transfer was “to ensure that [his] intellec-
 tual property remained enforceable, licensable, and sella-
 ble to the fullest extent possible.” A.A. 136.
      On March 1, 2008, ADS entered an “inoperative and
 void” status, for non-payment of taxes. A.A. 108 (capitali-
 zation normalized). In late 2009, before executing the 2009
 transfer, Mr. Tormasi suspected WDC of infringing upon
 the ’301 patent after reading an article examining WDC
 hard drives. A.A. 18. Having been barred from filing suit
 on behalf of ADS by the District of New Jersey, Mr. Tor-
 masi, while he was still incarcerated, directed ADS to
 adopt a corporate resolution to assign and transfer “all
 right, title, and interest” in the ’301 patent to himself in
 December 2009. A.A. 155 (2009 Corporate Resolutions),
 157 (2009 Assignment). Mr. Tormasi asserts that “[t]he
 purpose of the transfer in ownership was to permit
 [Mr. Tormasi] to personally pursue, and to personally ben-
 efit from, an infringement action against [WDC] and oth-
 ers.” A.A. 138.
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 TORMASI V. WESTERN DIGITAL CORP.                              5



      In January 2019, at the direction of Mr. Tormasi, ADS
 again assigned to Mr. Tormasi “all right, title, and interest”
 in the ’301 patent, as well as the authority “to pursue all
 causes of action and legal remedies arising during the en-
 tire term” of the ’301 patent. A.A. 27 (2019 Assignment).
 Mr. Tormasi asserts that the “purpose for executing the
 [2019] Assignment . . . was to provide up-to-date evidence
 confirming” that he owned the ’301 patent and “had ex-
 press authority to sue for all acts of infringement.”
 A.A. 140. In February 2019, Mr. Tormasi sued WDC for
 patent infringement. A.A. 13, 20–24. During the course of
 litigation, Mr. Tormasi learned that in 2008, ADS had en-
 tered an “inoperative and void” status. See A.A. 76 (Motion
 to Dismiss). In April 2019, WDC moved to dismiss Mr. Tor-
 masi’s suit for lack of standing and capacity to sue.
 A.A. 56–86. In November 2019, the District Court issued
 its Order, finding that Mr. Tormasi lacked capacity to sue,
 but did not “reach the standing issue.” Tormasi, 2019 WL
 6218784, at *2.
                          DISCUSSION
         I. Standard of Review and Legal Standard
     “We apply regional circuit law to the review of motions
 to dismiss for failure to state a claim under
 [FRCP] 12(b)(6),” In re TLI Commc’ns LLC Patent Litig.,
 823 F.3d 607, 610 (Fed. Cir. 2016) (citation omitted), here,
 the Ninth Circuit. 5 The Ninth Circuit reviews a district
 court’s decision to grant a motion to dismiss under FRCP
 12(b)(6) de novo. See Fayer v. Vaughn, 649 F.3d 1061,
 1063–64 (9th Cir. 2011). To survive a motion to dismiss for
 failure to state a claim, a complaint must allege “enough
 facts to state a claim to relief that is plausible on its face.”



     5    FRCP 12(b)(6) provides that a party may assert by
 motion a defense of “failure to state a claim upon which re-
 lief can be granted.” FED. R. CIV. P. 12(b)(6).
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 6                          TORMASI V. WESTERN DIGITAL CORP.




 Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007).
 “While legal conclusions can provide the complaint’s frame-
 work, they must be supported by factual allegations.” Ash-
 croft v. Iqbal, 556 U.S. 662, 679 (2009).
     We “review[] questions of law, including . . . capacity to
 sue under [FRCP] 17(b), without deference.” Paradise Cre-
 ations, Inc. v. UV Sales, Inc., 315 F.3d 1304, 1307 (Fed.
 Cir. 2003) (citation omitted); see Johns v. Cty. of San Diego,
 114 F.3d 874, 877 (9th Cir. 1997) (reviewing a district
 court’s decision as to “[a]n individual’s capacity to sue” de
 novo). “Capacity to sue in federal district court is governed
 by [FRCP] 17(b).” See S. Cal. Darts Ass’n v. Zaffina, 762
 F.3d 921, 926 (9th Cir. 2014). Under this rule, an individ-
 ual’s capacity to sue is determined by “the law of the indi-
 vidual’s domicile.” FED. R. CIV. P. 17(b)(1). In New Jersey,
 “[e]very person who has reached the age of majority . . . and
 has the mental capacity may prosecute or defend any ac-
 tion in any court.” N.J. STAT. ANN. § 2A:15-1 (2013).
 New Jersey inmates are further governed by New Jersey
 Administrative Code Title 10A (“Title 10A”), see Tormasi v.
 Hayman, No. CIVA08-5886(JAP), 2009 WL 1687670, at *8
 (D.N.J. June 16, 2009), which sets forth regulations gov-
 erning, inter alia, adult inmates in New Jersey’s prisons,
 see N.J. ADMIN. CODE § 10A:1-2.1 (“N.J.A.C. 10A:1 through
 10A:30 shall be applicable to State correctional facilities
 under the jurisdiction of the Department of Corrections”).
 For instance, under Title 10A, the “no business” rule pro-
 vides that “commencing or operating a business or group
 for profit . . . without the approval of the Administrator” is
 a prohibited act. Id. § 10A:4-4.1(a)(3)(xix).
 II. The District Court Did Not Err in Dismissing Mr. Tor-
       masi’s Complaint for Lack of Capacity to Sue
     The District Court concluded that “because New Jersey
 law prevents inmates from ‘commencing or operating a
 business or group for profit . . . without the approval of the
 Administrator,’” Mr. Tormasi lacked capacity to sue WDC
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 TORMASI V. WESTERN DIGITAL CORP.                               7



 for patent infringement. Tormasi, 2019 WL 6218784, at *2
 (quoting N.J. ADMIN. CODE § 10A:4-4.1(a)(3)(xix)). Mr. Tor-
 masi argues “that the [D]istrict [C]ourt erred by relying on
 the [no-business rule].” Appellant’s Br. 31. Mr. Tormasi
 asserts that his lawsuit “cannot be construed as an unper-
 mitted business activity” because it “seeks to enforce his
 personal intellectual-property rights.” 6 Id. at 31–32. We
 disagree.
     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 characteri-
 zation of his suit as personal, as opposed to related to busi-
 ness, to be without merit. Tormasi v. Hayman, 443 F.
 App’x 742 (3d Cir. 2011). Mr. Tormasi is an inmate domi-
 ciled in New Jersey. A.A. 133. As such, New Jersey law
 applies in determining Mr. Tormasi’s capacity to sue. See
 FED. R. CIV. P. 17(b)(1) (providing that “[c]apacity to sue . . .
 is determined . . . by the law of the individual’s domicile”).
 While Mr. Tormasi contends that his capacity to sue is



     6    Mr. Tormasi briefly asserts in his reply brief that
 he had the Administrator’s “express or implied” approval
 to procced with his patent infringement suit. Appellant’s
 Reply 19–20. He did not raise this argument in his opening
 brief or before the District Court. See generally Appellant’s
 Br. 31–39; A.A. 109–44 (Opposition to Motion to Dismiss).
 Thus, Mr. Tormasi’s argument is waived. See Bozeman
 Fin. LLC v. Fed. Reserve Bank of Atlanta, 955 F.3d 971,
 974 (Fed. Cir. 2020) (“[A]rguments not raised in an appel-
 lant’s opening brief [are] waived absent exceptional cir-
 cumstances.”); Game & Tech. Co. v. Wargaming Grp. Ltd.,
 942 F.3d 1343, 1350–51 (Fed. Cir. 2019) (declining to con-
 sider a new argument raised for the first time on appeal).
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 8                           TORMASI V. WESTERN DIGITAL CORP.




 solely determined by N.J. STAT. ANN. § 2A:15-1, see Appel-
 lant’s Reply 14, which pertains to legal majority and men-
 tal capacity, see N.J. STAT. ANN. § 2A:15-1, “[l]awful
 incarceration brings about the necessary withdrawal or
 limitation of many privileges and rights, a retraction justi-
 fied by the considerations underlying our penal system[,]”
 Price v. Johnston, 334 U.S. 266, 285 (1948), abrogated on
 other grounds by McCleskey v. Zant, 499 U.S. 467 (1991).
 Mr. Tormasi is an inmate at a New Jersey prison, subject
 to Title 10A, which prohibits him from operating a busi-
 ness. N.J. ADMIN. CODE § 10A:4-4.1(a)(3)(xix). Therefore,
 the “no business” rule is applicable to Mr. Tormasi. 7



     7    On appeal, Mr. Tormasi argues that even if he vio-
 lated the “no business” rule, it does not limit the scope of
 N.J. STAT. ANN. § 2A:15-1 for inmates. Appellant’s Br. 32–
 33, 36–38. Mr. Tormasi did not, however, argue to the Dis-
 trict Court that the “no business” rule cannot generally
 limit the scope of an inmate’s capacity to sue. See generally
 A.A. 109–44. The argument is, accordingly, waived, and
 Mr. Tormasi has therefore conceded that the no business
 rule may limit his capacity to sue. See Fresenius USA, Inc.
 v. Baxter Int’l, Inc., 582 F.3d 1288, 1296 (Fed. Cir. 2009)
 (“If a party fails to raise an argument before the trial court,
 or presents only a skeletal or undeveloped argument to the
 trial court, we may deem that argument waived on ap-
 peal[.]”)); see also Sage Prods. Inc. v. Devon Indus., 126
 F.3d 1420, 1426 (Fed. Cir. 1997) (“[A]ppellate courts do not
 consider a party’s new theories, lodged first on appeal.”).
 The Dissent takes issue with this conclusion, understand-
 ing Mr. Tormasi to have preserved his argument by assert-
 ing below that the “no business” rule “‘was never intended
 to supersede [his] right to file civil lawsuits in his personal
 capacity,’” but rather “that his capacity to sue is governed
 by § 2A:15-1, which requires only that he has ‘reached the
 age of majority’ and possesses ‘mental capacity,’” leaving
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 TORMASI V. WESTERN DIGITAL CORP.                             9



     Mr. Tormasi’s counterargument that he has not vio-
 lated the no business rule is unpersuasive. For example,
 we find the Third Circuit’s reasoning persuasive, that
 Mr. Tormasi’s unfiled patent application qualified as “com-
 mencing or operating a business or group for profit,” as it
 was in furtherance of his intellectual property business.
 See Tormasi, 443 F. App’x at 745; see also Stanton v. New
 Jersey Dep’t of Corr., No. A-1126-16T1, 2018 WL 4516151,
 at *4 (N.J. Super. Ct. App. Div. Sept. 21, 2018), cert. denied,
 218 A.3d 305 (N.J. 2019) (concluding that an inmate vio-
 lated the “no business” rule by attempting to operate a pub-
 lishing company). Here similarly, Mr. Tormasi’s lawsuit is
 in furtherance of his intellectual property business by tak-
 ing certain business actions purely to preserve the commer-
 cial value of his intellectual property. See A.A. 134.
 For instance, Mr. Tormasi asserts that he took “precaution-
 ary measures to ensure that [his] intellectual property re-
 mained enforceable, licensable, and sellable to the fullest
 extent possible.” A.A. 136 (emphasis added). Mr. Tormasi


 his “‘imprisonment status or prison behavior . . . irrelevant
 to the capacity-to-sue standard.’” Dissent Op. 1–2 (quoting
 A.A. 123–24 (Opp’n to Mot. to Dismiss)). We disagree. Mr.
 Tormasi made these assertions in support of his argument
 that the “no business” rule would run afoul of the First and
 Fourteenth Amendments if the “no business” rule pre-
 vented him from filing suit while imprisoned, not whether
 the N.J. statute superseded the “no business”
 rule. A.A. 122, 125. The first time that Mr. Tormasi ar-
 gues that “administrative regulations cannot supersede
 statutes,” is on appeal, Appellant’s Br. 32, where he also
 abandons his constitutional argument, Appellant’s Reply
 15–16. Moreover, Mr. Tormasi does not attempt to rebut
 WDC’s waiver argument in his Reply. Appellant’s Reply
 15–16. Thus, Mr. Tormasi has not preserved his legal ar-
 gument, and we need not decide whether Mr. Tormasi’s
 newly proposed interpretation of the regulation is correct.
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 10                          TORMASI V. WESTERN DIGITAL CORP.




 further asserts that “[t]he purpose of [one of his] transfer[s]
 in ownership was to permit [himself] to . . . personally ben-
 efit from, an infringement action against WDC and other
 entities.” A.A. 136. Mr. Tormasi then sued WDC for in-
 fringing the ’301 patent and sought damages of at least $5
 billion. A.A. 24. Accordingly, Mr. Tormasi’s patent in-
 fringement suit is in furtherance of operating an intellec-
 tual property business for profit, and, therefore, prohibited
 under the “no business” rule. N.J. ADMIN. CODE § 10A:4-
 4.1(a)(3)(xix); see generally Tormasi, 443 F. App’x at 742
 (finding that an unfiled patent application qualified as a
 prohibited act under the New Jersey “no business” rule).
 Because New Jersey prohibits inmates from pursuing a
 business, N.J. ADMIN. CODE § 10A:4-4.1(a)(3)(xix), and be-
 cause of Mr. Tormasi’s repeated attempts to profit as a
 business from the patent, see Tormasi, 443 F. App’x at 742
 (finding Mr. Tormasi’s attempt to file a patent application
 qualified as operating a business for profit), 8 the District
 Court did not err when it determined that Mr. Tormasi


      8  The Dissent concludes that our “extension of the
 Third Circuit’s reasoning to affirm the district court’s hold-
 ing that Mr. Tormasi lacks capacity to sue in this case is
 inappropriate given the facts of this case[,]” as “the present
 lawsuit involves only Mr. Tormasi’s claim for alleged pa-
 tent infringement, the Third Circuit’s decision . . . , and the
 ‘no business’ rule should not be at issue at all.” Dissent Op.
 3. To the contrary, we do not cite to the Third Circuit’s
 decision for the conclusion that Mr. Tormasi lacks capacity
 to sue, we cite it to demonstrate that Mr. Tormasi’s patent
 lawsuit is in furtherance of his intellectual property busi-
 ness and that business violates the “no business” rule. See
 Tormasi, 443 F. App’x at 742, 745. Accordingly, it is appro-
 priate for us to cite to the Third Circuit’s decision to estab-
 lish that Mr. Tormasi’s conduct violated the “no business”
 rule. See id. (determining what conduct and activity con-
 stituted a violation of the “no business” rule).
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 TORMASI V. WESTERN DIGITAL CORP.                         11



 lacked the capacity to bring this suit for patent infringe-
 ment. 9
                        CONCLUSION
    We have considered Mr. Tormasi’s other arguments
 and each of the remaining issues raised on appeal, and find
 them to be without merit. 10 Accordingly, the Order of the
 U.S. District Court for the Northern District of California,
 is
                        AFFIRMED




     9   It is conceivable that Mr. Tormasi might, in the fu-
 ture, attain capacity to sue, but under the circumstances of
 this case, the District Court did not err in concluding that
 he does not presently possess that capacity.
     10  Mr. Tormasi argues that the District Court erred
 by dismissing his Complaint for lack of capacity to sue
 without first considering whether “the threshold stand-
 ing/jurisdictional issue is resolved in his favor.” Appel-
 lant’s Br. 2. However, the actual issue raised by Mr.
 Tormasi is whether the District Court erred by not first de-
 termining if he met the “statutory prerequisite” of 35
 U.S.C. § 281 (providing that “[a] patentee shall have rem-
 edy by civil action for infringement of his patent” (empha-
 sis added)). Because capacity to sue is a threshold
 question, which the District Court determined, the District
 Court did not err by not reaching the question of whether
 Mr. Tormasi was a patentee under § 281, as it became
 moot. Katz v. Lear Siegler, Inc., 909 F.2d 1459, 1463 (Fed.
 Cir. 1990) (finding that “it was necessary to resolve the
 threshold question of . . . capacity to sue”).
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         NOTE: This disposition is nonprecedential.


    United States Court of Appeals
        for the Federal Circuit
                  ______________________

                 WALTER A. TORMASI,
                   Plaintiff-Appellant

                              v.

         WESTERN DIGITAL CORPORATION,
                Defendant-Appellee
              ______________________

                        2020-1265
                  ______________________

    Appeal from the United States District Court for the
 Northern District of California in No. 4:19-cv-00772-HSG,
 Judge Haywood S. Gilliam, Jr.
                  ______________________

 STOLL, Circuit Judge, dissenting.
      I respectfully dissent because I disagree with the ma-
 jority that Mr. Tormasi waived his argument that the “no
 business” rule does not limit the scope of an inmate’s ca-
 pacity to sue under N.J. STAT. ANN. § 2A:15-1 (2013). See
 Maj. 8 n.7. To the contrary, in his briefing to the district
 court, Mr. Tormasi asserted that the “no business” rule
 “was never intended to supersede [his] right to file civil
 lawsuits in his personal capacity.” A.A. 123. Mr. Tormasi
 further explained that his capacity to sue is governed by
 § 2A:15-1, which requires only that he has “reached the age
 of majority” and possesses “mental capacity.” A.A. 124.
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 2                          TORMASI   v. WESTERN DIGITAL CORP.



 (quoting § 2A:15-1). Mr. Tormasi added that his “impris-
 onment status or prison behavior is irrelevant to the capac-
 ity-to-sue standard.” Id. (citing § 2A:15-1). In my view,
 these assertions fairly preserved Mr. Tormasi’s legal argu-
 ment that the “no business” rule cannot generally limit the
 scope of an inmate’s capacity to sue, especially in view of
 the fact that he is a pro se litigant. See McZeal v. Sprint
 Nextel Corp., 501 F.3d 1354, 1356 (Fed. Cir. 2007) (“Where,
 as here, a party appeared pro se before the trial court, the
 reviewing court may grant the pro se litigant leeway on
 procedural matters . . . .” (italics removed)).
      Indeed, Mr. Tormasi makes an important legal argu-
 ment that the district court should have addressed in the
 first instance. It makes little sense to narrow the New Jer-
 sey statute on capacity to sue in light of the “no business”
 rule, which is an administrative rule of the Department of
 Corrections that prescribes sanctions for certain “prohib-
 ited acts.” N.J. ADMIN. CODE § 10A:4-4.1(a) (2019). Under
 this “no business” rule, the prohibited act of “commencing
 or operating a business or group for profit . . . without the
 approval of the Administrator” is subject to “a sanction of
 no less than 31 days and no more than 90 days of adminis-
 trative segregation,” id. § 10A:4-4.1(a)(3), as well as one or
 more of the sanctions listed at section 10A:4-5.1(i–j) of the
 New Jersey Administrative Code, which includes loss of
 correctional facility privileges, loss of commutation time,
 loss of furlough privileges, confinement, On-The-Spot Cor-
 rection, confiscation, extra duty, or a referral of an inmate
 to the Mental Health Unit for appropriate care or treat-
 ment. On its face, the “no business” rule does not include
 the loss of the capacity to sue as a punishment. And, as
 Mr. Tormasi further noted in his briefing to the district
 court, limiting the capacity to sue statute based on the “no
 business” rule is inconsistent with another section of the
 same administrative code, which expressly provides that
 “[i]nmates have [the] constitutional right of access to the
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 TORMASI   v. WESTERN DIGITAL CORP.                         3



 courts.” A.A. 123 (alterations in original) (quoting N.J.
 ADMIN. CODE § 10A:6-2.1).
      The majority relies heavily on Tormasi v. Hayman,
 443 F. App’x 742 (3d Cir. 2011), an earlier case also involv-
 ing Mr. Tormasi, in which Mr. Tormasi asserted that his
 constitutional rights were violated when prison officials
 confiscated his unfiled patent application under the “no
 business” rule. Rejecting Mr. Tormasi’s argument that the
 “no business” rule did not apply to patent applications, the
 Third Circuit concluded that confiscation was a permissi-
 ble punishment because Mr. Tormasi’s intent to assign the
 patent application to his own corporate entity for selling or
 licensing purposes qualified as a violation of the “no busi-
 ness” rule. Id. at 745. As noted above, confiscation is one
 of the prescribed punishments for a violation of the “no
 business” rule. See N.J. ADMIN. CODE § 10A:4-5.1(i)(6).
 The majority’s extension of the Third Circuit’s reasoning to
 affirm the district court’s holding that Mr. Tormasi lacks
 capacity to sue in this case is inappropriate given the facts
 of this case. See Maj. 7–10. Prison officials never enforced
 any disciplinary action or sanction under the “no business”
 rule against Mr. Tormasi; nor does Mr. Tormasi challenge
 any such action. Because the present lawsuit involves only
 Mr. Tormasi’s claim for alleged patent infringement, the
 Third Circuit’s decision in Tormasi, 443 F. App’x 742, and
 the “no business” rule should not be at issue at all. I re-
 spectfully dissent.
