Opinion
135611
04-26-2021
Amy R. GURVEY, US Patentee, Claimant, v. STATE of New York and New York State Thruway Authority, Defendant.
For Claimant: Amy R. Gurvey, Pro Se For Defendant: Honorable Letitia James, Attorney General, By: Anthony Rotondi, Esq., Assistant Attorney General
For Claimant: Amy R. Gurvey, Pro Se
For Defendant: Honorable Letitia James, Attorney General, By: Anthony Rotondi, Esq., Assistant Attorney General
Francis T. Collins, J.
Defendants move to dismiss the instant claim for lack of jurisdiction pursuant to CPLR 3211 (2) and (5). Claimant opposes the motion and cross-moves to dismiss the defendants’ defenses, for summary judgment pursuant to CPLR 3212, and for the imposition of sanctions and an award of costs and attorney's fees.
Claimant seeks damages for patent infringement, appropriation of patent rights, tortious interference with her right to recover infringement damages and violation of the applicable rules and protocols arising from disciplinary proceedings instituted by the Grievance Committee for the First Judicial Department.
Claimant's present foray into the Court of Claims follows years of unsuccessful litigation in the federal court where she commenced various actions, including an action against her former attorneys and others alleging legal malpractice, breach of fiduciary duty and misappropriation of trade secrets (see Gurvey v Cowan, Liebowitz & Latman , P.C., 757 Fed Appx 62 [2d Cir 2018], cert denied US Dist Ct, 140 SC, 161, Oct. 7, 2019, rehearing denied US Dist Ct, 140 SC 576, Nov. 25, 2019; Gurvey v Cowan, Liebowitz & Latman, P.C. , 2017 WL 2880554 [SD NY 2017] ; Gurvey v Cowan, Liebowitz & Latman, P.C. , 2015 WL 5459655 [SD NY 2015] ; Gurvey v Cowan, Liebowitz & Latman, P.C. , 2014 WL 6491281 [SD NY 2014] ; Gurvey v Cowan, Liebowitz & Latman, P.C. , 2013 WL 3718071 [SD NY 2013] ; Gurvey v Cowan, Liebowitz & Latman, P.C. , 462 Fed Appx 26 [2d Cir 2012] ). Claimant also challenged, unsuccessfully, a determination of the Disciplinary Committee for the First Judicial Department finding her guilty of misconduct based upon her long pattern of engaging in frivolous litigation and willful disregard of court orders imposing sanctions (see Matter of Gurvey , 102 AD3d 197 [1st Dept 2012] ). Unsatisfied with the result, claimant unsuccessfully sued the State and various State officials in both state and federal court (see Weissbrod v State of New York, Ct Cl, May 31, 2012, Soto, J., claim No. 120309, UID No. 2012-043-017; Gurvey v Lippman, 753 Fed Appx 906 [2d Cir 2019] ; Weissbrod v Gonzalez , 576 Fed Appx 18 [2d Cir 2014] ). In fact, claims similar to the one at bar were dismissed by the Hon. Faviola Soto who sanctioned the claimant by "enjoin[ing] [her] from commencing or bringing further claims, motions or additional submissions arising out of or relating to, directly or indirectly, the same continuum of facts previously litigated in the Court of Claims, without prior permission of this Court" (Weissbrod v State of New York , Ct Cl, May 31, 2012, Soto, J., claim No. 120309). Undeterred, claimant has since filed several claims in this Court without prior permission.
The Rules and Procedures of the Departmental Disciplinary Committee (22 NYCRR Part 605) were repealed effective October 1, 2016 and replaced with the Rules For Attorney Disciplinary Matters (22 NYCRR Part 1240). Although "Committee" as used in Part 1240 is now defined as "attorney grievance committee" (22 NYCRR 1240.2 [d]), it was previously referred to as the Departmental Disciplinary Committee. Inasmuch as much of the conduct complained of occurred prior to the repeal of Part 605, "Disciplinary Committee" and "Grievance Committee" are used interchangeably herein.
Claim number 128261 sought damages for patent infringement and unauthorized outsourcing and use of her patent. The claim was dismissed on the ground it failed to meet the pleading requirements of Court of Claims Act § 11 (b) (see Weissbrod Gurvey v State of New York , Ct Cl, Feb. 10, 2017, Collins, J. claim No. 128261, UID No. 2017-015-202). Although claimant is a trained lawyer, she moved for summary judgment following the dismissal, and for leave to renew and or reargue the same order on three separate occasions (see Weissbrod-Gurvey v State of New York , Ct Cl, claim No. 128261, May 11, 2020, Collins, J., claim No. 128261, UID No. 2020-015-055; Weissbrod Gurvey v State of New York , Ct Cl, claim No. 128261, Oct. 31, 2019, Collins, J., UID No. 2019-015-201; Weissbrod Gurvey v State of New York , Ct Cl, claim No. 128261, Aug. 20, 2018, Collins, J., UID No. 2018-015-152; Weissbrod-Gurvey v State of New York , Ct Cl, claim No. 128261, June 7, 2017, Collins, J., UID No. 2017-015-239). All the motions were denied.
Claimant is suspended from the practice of law in New York (see New York State Unified Court System, https://iapps.courts.state.ny.us/attorneyservices/search4 & tab=attorney [last visited Mar. 2, 2021]).
Claim number 134439, which also alleged damages for patent infringement, civil rights violations and misconduct by the First Department Disciplinary Committee, was dismissed, without opposition, as jurisdictionally defective (it was unverified) and for improper service. Claim number 135057 was dismissed, without prejudice, at claimant's request.
With this background, the Court will address the instant motion. First, the defendants contend dismissal is required for lack of jurisdiction.
With respect to claimant's causes of action premised upon violations of the Federal Constitution, the State is not a "person" within the meaning of the enabling legislation and recovery against the State is not permitted under principles of respondeat superior ( 42 USC § 1983 ; Will v Michigan Dept. of State Police , 491 US 58 [1989] ; Monell v Department of Social Services of City of New York , 436 US 658, 691-694 [1978] ; Brown v State of New York , 89 NY2d 172, 184-185 [1996] ; Flemming v State of New York , 120 AD3d 848 [3d Dept 2014] ; Shelton v New York State Liq. Auth. , 61 AD3d 1145 [3d Dept 2009] ). Thus, to the extent the claim rests on alleged violations of the Federal Constitution, this Court lacks jurisdiction.
Next, with respect to claimant's allegations arising from the conduct of the Disciplinary Committee, First Department, in suspending her from the bar and failing to investigate her complaints of misconduct against her former patent attorneys, this Court twice dismissed similar claims on the ground the actions of the Disciplinary Committee " ‘are discretionary governmental functions, not subject to review in a civil action for damages in the Court of Claims. Any right to review the determinations made during the disciplinary process is found within that process itself, not in the guise of a collateral civil action for damages’ " (Weissbrod Gurvey v State of New York , Ct Cl, Feb. 10, 2017, Collins, J., claim No. 128261, UID No. 2017-015-202, quoting Napolitano v The New York State Grievance Committee, Robert Saltzman (counsel xx ), New York State , Ct Cl, May 6, 2005, Scuccimarra, J., claim No. 110140, UID No. 2005-030-915; see also Weissbrod v The State of New York , Ct Cl, June 10, 2009, Marin, J., claim No. 113526, UID No. 2009-016-039). The claim here must once again be dismissed to the extent it rests upon these same allegations.
Claimant's allegation that the First Department Disciplinary Committee lacked jurisdiction to sanction her was raised and rejected at the disciplinary hearing and on appeal (see Matter of Gurvey , 102 AD3d 197 [1st Dept 2012], appeal dismissed 102 AD3d 197 [2012] ; recon denied 21 NY3d 968 [2013] ).
Turning to the primary claim, claimant alleges the State is "currently directly infringing, actively inducing others to infringe, and or contributing to the infringement of ... [her] patents" in violation of 35 USC § 271 (claim, ¶ 49). In addition, claimant alleges New York State agencies "unlawfully took" her patents in violation of the constitution (Claim, ¶¶ 25, 26, 30, 33 [f]).
An action for patent infringement may be brought against "whoever without authority makes, uses, offers to sell, or sells any patented invention ... during the term of the patent therefor" ( 35 USC § 271 [a]) or against whoever actively induces infringement ( 35 USC § 271 [b]). However, jurisdiction over claims "arising under" the federal patent or trademark laws rests exclusively in the federal courts ( 28 USC § 1338 [a]). The governing statute could not be any clearer in its pronouncement that "[N]o State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights" (id. ).
In determining whether a State Court has jurisdiction over a claim, the Court of Appeals has made a distinction between "questions" arising under the patent laws and "cases" arising under the patent laws ( American Harley Corp. v Irvin Indus. , 27 NY2d 168, 174 [1970] ; cert denied sub nom. 401 US 976 [1971] ). A "case" arises under the patent law when a well-pled complaint "sets up a right under the patent laws as ground for a recovery" ( Pratt v Paris Gas Light & Coke Co. , 168 US 255, 259 [1897] ; accord Christianson v Colt Industries Operating Corp. , 486 US 800 [1988] ). Actions which only tangentially relate to the validity of a patent, such as one for breach of contract or tortious interference with contract rights, do not arise under the patent laws. As stated by the Court in American Harley, "the fact that the foundation for suit is a contract granting patent rights and that the plaintiff must rely on the patent in support of his cause of action is not determinative and neither vests the Federal court with jurisdiction nor deprives the State court of power to entertain the action" ( 27 NY2d at 172 ; see also Airco Alloys Div., Airco, Inc. v Niagara Mohawk Power Corp. , 65 AD2d 378, 383-384 [4th Dept 1978] ["common-law claims do not lose their character because ... there exists a related, and perhaps relevant, scheme of federal regulation.... [E]xclusive jurisdiction provisions do not divest the state courts of the power to decide questions arising under the laws of the United States, but only ‘cases’ arising under those laws"]; Sylmark Holdings Ltd. v Silicone Zone Intl. Ltd., 5 Misc 3d 285, 294 [Sup Ct, NY County, 2004] ["While federal courts have exclusive jurisdiction over cases arising under patent law, ‘actions involving contracts relating to patents ... are not considered suits arising under those laws, and are properly brought in State court’ "] [citation omitted]). Unlike the facts in American Harley , the claim here clearly arises under the patent laws as claimant alleges the State and or its agencies infringed her patents directly.
Claimant's contention in both the claim and in opposition to the motion that certain conduct of Grievance Committee members tortiously interfered with her right to recover damages for patent infringement in federal court, stems from her allegation that certain attorneys affiliated with the law firm representing the alleged patent infringers in her legal malpractice/trade secret lawsuit were also members of the First Department Grievance Committee who corrupted her confidential bar file and tortiously interfered with her right to recover damages in the case. While tortious interference with contract rights, for example, may provide a jurisdictional basis for the assertion of state court jurisdiction (see American Harley Corp., supra ), this is not such a case. Claimant's allegation of misconduct by Disciplinary Committee members was raised by claimant as a basis for her motion to disqualify defense counsel in her malpractice action against her former attorneys and was denied as meritless (see Gurvey v Cowan, Liebowitz & Latman, P.C. , 2014 WL 6491281 [SD NY 2014] ). Inasmuch as the identical issue was raised and fully litigated by the claimant in the Federal District Court, she may not collaterally attack the propriety of that decision in State Court ( Ryan v New York Tel. Co. , 62 NY2d 494, 500 [1984] ; Wiltz v City of New York, 191 AD3d 452 [1st Dept 2021] ; Milione v City Univ. of NY, 153 AD3d 807 [2d Dept 2017] ; lv denied 30 NY3d 907 [2017] ; cert denied 138 S Ct 2027 USNY [2018]). Moreover, the malpractice cause of action was dismissed as barred by the applicable statute of limitations ( Gurvey v Cowan, Lieberman & Latman, P.C. , 757 Fed Appx 62, supra ). The claimant's cause of action for tortious interference therefore fails as a matter of law.
Claimant also sued certain Disciplinary Committee members in federal court several times. Those claims were also dismissed (see e.g., Gurvey v Lippman , 753 Fed Appx 906, supra ).
In addition to a patent infringement cause of action under 35 USC § 271, a liberal reading of the claim invokes article I, § 7 (a) of the State Constitution ("[p]rivate property shall not be taken for public use without just compensation") and the Fifth Amendment to the Federal Constitution ("nor shall private property be taken for public use, without just compensation") in support of a "takings" claim thereunder. Inasmuch as Eleventh Amendment immunity shields the states from liability under the patent laws in federal court (see Florida Prepaid Postsecondary Educ. Expense Bd. v College Sav. Bank , 527 US 627, 632 [1999] ), some background is necessary in determining whether the State of New York is amenable to suit in the Court of Claims for a "taking" of her patent without just compensation.
In 1992, the patent laws were amended in response to at least two cases which held that Congress had evidenced no intent to abrogate the States’ Eleventh Amendment immunity under the patent laws (see Jacobs Wind Elec. Co., Inc. v Florida Dept. of Transp. , 919 F2d 726 [Fed Cir 1990] ; Chew v State of Cal. , 893 F2d 331 [Fed Cir 1990], cert denied 498 US 810 [1990] ). In Chew , which was followed by the Court in Jacobs Wind , the Federal Circuit Court of Appeals concluded that "even under the broadest view of the power to abrogate, Congress must ‘make its intent to do so "unmistakably clear," ’ " which it failed to do in the patent laws as they then existed ( 893 F2d at 334, quoting Pennsylvania v Union Gas Co. , 491 US 1 [1989] ). Having concluded that the State of California was immune from liability for patent infringement in federal court, the Court dismissed the patent infringement claim. Interestingly, the fact that Chew may have been left without a forum to sue the State was not determinative. Moreover, the Court rejected the contention that Chew was entitled to compensation to vindicate her "takings" claim, reasoning that a patent infringement suit was not the appropriate legal remedy.
In Jacobs Wind (919 F2d 726 ) (hereinafter Jacobs Wind I ) the Federal Circuit Court of Appeals similarly held that the State was immune from liability under the patent law in federal court and rejected the contention that plaintiff would be left without a remedy. The Court noted that the plaintiff could have sought relief from the Florida Legislature through a claims bill and "may assert a ‘takings’ claim against the state under the Fifth and Fourteenth Amendments" ( id. at 728 ). The Court also noted that "there is no limitation on the ability of a state court to decide the question of validity when properly raised in a state court proceeding" (id. ). Following the dismissal of the Federal Circuit case, the plaintiff in Jacobs Wind I commenced a Florida state court action (see Jacobs Wind Elec. Co., Inc. v Dept. of Transp. , 626 So. 2d 1333 [Sup Ct Fl 1993] (hereinafter Jacobs Wind II )). The Supreme Court of Florida rejected the contention that Congress preempted the field of patent law, noting "Congress can preempt portions of a field of law without preempting the field of law in its entirety" ( id. at 1335 ). The Court stated that "[t]he patent statutes were intended to provide a remedy, not exclude one" and because " ‘[a] patent is a species of property’ " concluded that "takings" and conversion claims may be brought in state court under the State and Federal Constitution, both of which prohibit the State's taking of property without due process or just compensation ( id. at 1336-1337 [citation omitted]; see also Wilcox Industries Inc. v State , 79 Ohio App 3d 403 [1992] [patent owner's action could be brought in State Court for the State's unauthorized use of an invention under principles of eminent domain]).
In response to Chew and Jacobs Wind I , Congress amended the patent laws to make clear that " ‘States, instrumentalities of States, and officers and employees of States acting in their official capacity, are subject to suit in Federal court by any person for infringement of patents and plant variety protections’ " ( Florida Prepaid , 527 US at 632, quoting Pub.L. 102–560, preamble, 106 Stat. 4230). Before the amendments, 35 USC § 271 stated only that "whoever without authority makes, uses, offers to sell, or sells any patented invention ... during the term of the patent therefor, infringes the patent" ( 35 U.S.C. § 271 [a]). The 1992 amendments added subsection (h), which states:
"As used in this section, the term ‘whoever’ includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this title in the same manner and to the same extent as any nongovernmental entity" ( 35 USC 271 [h]).
In addition, Congress added 35 USC § 296, which specifically addresses the immunity issue as follows:
"(a) In General.—Any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his official capacity, shall not be immune, under the eleventh amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal court by any person, including any governmental or nongovernmental entity, for infringement of a patent under section 271, or for any other violation under this title" ( 35 USC § 296 [a]).
Notwithstanding the unequivocal expression of intent to abrogate the states’ Eleventh Amendment immunity, the Supreme Court in Florida Prepaid determined that Congress did not act pursuant to a valid exercise of congressional power in light of the scant support for Congress’ conclusion that states were depriving patent owners of property without due process of law. The Court therefore concluded that the provisions of the Patent Remedy Act were " ‘so out of proportion to a supposed remedial or preventative object that [they] cannot be understood as responsive to, or designed to prevent, unconstitutional behavior’ " ( Florida Prepaid, 527 US at 646, quoting City of Boerne v Flores , 521 US 507, 532 [1997] ). In reaching this conclusion the Court noted that although patent rights are property which no person may be deprived of without due process of law:
"Congress did nothing to limit the coverage of the Act to cases involving arguable constitutional violations, such as where a State refuses to offer any state-court remedy for patent owners whose patents it had infringed. Nor did it make any attempt to confine the reach of the Act by limiting the remedy to certain types of infringement, such as nonnegligent infringement or infringement authorized pursuant to state policy; or providing for suits only against States with questionable remedies or a high incidence of infringement" ( Florida Prepaid , 527 US at 646-647 ).
As the law stands today, the states retain their Eleventh Amendment immunity from suit for patent infringement in federal court.
With this background, the Court must now determine the novel issue of whether the jurisdiction of the Court of Claims extends to the State's alleged "taking" of patent rights without just compensation. The Court in Florida Prepaid recognized that patents have long been considered a "species of property" entitled to protection from infringement ( 527 US at 642 ; see also Consolidated Fruit-Jar Co. v Wright , 94 US 92, 96 [1876] ) ["A patent for an invention is as much property as a patent for land"] and the Court of Claims Act itself provides no basis for concluding that jurisdiction does not lie for an appropriation of such property.
Court of Claims Act § 8 expressly waives the State's immunity and subjects the State to liability " in accordance with the same rules of law as applied to actions in the supreme court against individuals or corporations." Although the Court of Claims Act does not contain a definition of the term "corporations," the General Construction Law supplies the definitions of certain statutory terms used to interpret the language of a statute (see General Construction Law § 110 ), and includes a public corporation and municipal corporation within its definition of corporation ( General Construction Law §§ 65, 66 ). Both public corporations and municipal corporations have the power of eminent domain which may be litigated in the Supreme Court (see e.g. General Municipal Law § 74 ; Eminent Domain Procedure Law § 501 [B] ; see also General Municipal Law §§ 3-a [1] and [3] ;§ 112-a; 74-c; Railroad Law § 92 ). Moreover, the subject matter jurisdiction of the Court of Claims specifically includes the power "[t]o hear and determine a claim of any person, corporation or municipality against the state for the appropriation of any real or personal property or any interest therein ..." ( Court of Claims Act § 9 [2] ). Inasmuch as patents are considered personal property ( Florida Prepaid , 527 US at 642, citing Brown v Duchesne , 19 How 183, 197 [1856] ; cf. Ruckelshaus v Monsanto , 467 US 986 [1984] [Trade secrets were found to be property for the purposes of the Fifth Amendment's Taking Clause]), neither § 8 nor § 9 of the Court of Claims Act expressly preclude the assertion of jurisdiction over a takings claim arising from patent infringement by the State. Nevertheless, for the reasons which follow, this Court finds that jurisdiction over the instant patent infringement claim is lacking.
As previously indicated, this case "arises under" the patent laws which, on this basis alone, precludes the assertion of state-court jurisdiction ( 28 USC 1338 ). As stated in § 1338, "[t]he district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents .... No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents" (emphasis added). The Court of Appeals in American Harley Corp could not have been clearer in its pronouncement that state courts are "ousted" of jurisdiction for cases "arising under" federal patent laws ( 27 NY2d at 172 ). In this Court's view, litigants may not skirt the exclusivity provisions of the federal scheme by the mere expedient of re-casting their cause of action as a "taking" without just compensation in a state court action.
Equally significant is the fact that a patent is a creature of federal law, the contours of which are delineated exclusively thereunder. As noted by the dissent in Forida Prepaid , federal appellate jurisdiction was consolidated in 1982 because of the unique technical issues raised in patent infringement cases as well as the lack of uniformity among the federal circuits in their interpretation of patent issues. Although the United States Court of Appeals for the Federal Circuit now has exclusive appellate jurisdiction over all federal patent infringement cases (see 28 USC 1295 ), it has no jurisdiction to handle appeals from a state court. As a result, "[t]he reasons that motivated the creation of the Federal Circuit would be undermined by any exception that allowed patent infringement claims to be brought in state court" ( Florida Prepaid , 527 US at 652 ). Given the exclusivity of federal court jurisdiction over cases, such as this, which arise under the patent law and the lack of uniformity that would result from an exercise of State-court jurisdiction, the Court concludes that the New York State Court of Claims lacks jurisdiction over the instant patent infringement claim.
Claimant's cross motion to dismiss defenses, for summary judgment and for the imposition of sanctions is denied. Claimant has filed many claims both in federal and state court alleging similar facts which have all terminated in dismissal. Her request for the imposition of sanctions is completely without merit in law and unsupported by the facts. Claimant has previously been enjoined from filing claims without permission and is now warned that the future filing of similar claims or meritless motions may result in the imposition of sanctions (see 22 NYCRR 130-1.1 ).
For all the foregoing reasons, defendants’ motion is granted and the claim is dismissed. Claimant's cross motion is denied.
Papers Considered:
1. Notice of motion dated December 21, 2020;
2. Affirmation in support dated December 21, 2020;
3. Claimant's unsworn opposition and cross-motion to dismiss AG's defenses, dated March 21, 2020, with attachments;
4. Affirmation in Opposition to Cross Motion dated March 30, 2021.