Taylor v. United States Patent and Trademark Office

Filing 21

ORDER GRANTING MOTION TO DISMISS AND VACATING HEARING by Judge William Alsup [granting 15 Motion to Dismiss]. (whasec, COURT STAFF) (Filed on 11/20/2012) (Additional attachment(s) added on 11/20/2012: # 1 Certificate/Proof of Service) (dt, COURT STAFF).

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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MARCUS TAYLOR,

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For the Northern District of California

United States District Court

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Plaintiff,

No. C 12-03851 WHA

v.
UNITED STATES PATENT AND
TRADEMARK OFFICE,

ORDER GRANTING
MOTION TO DISMISS
AND VACATING HEARING

Defendant.
/

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INTRODUCTION

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In this civil action, defendant seeks to dismiss pro se plaintiff’s complaint. For the

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following reasons, defendant’s motion to dismiss is GRANTED.
BACKGROUND
Plaintiff Marcus Taylor submitted a disclosure document to defendant United States

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Patent and Trademark Office in 1993 that described an invention called a heliatomic generator.

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A disclosure document was a document filed by an inventor with the USPTO that described

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the invention with the purpose of providing proof of conception date. If two years had passed

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without a patent application being filed, then the document was destroyed. The disclosure

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document program was discontinued in 2007 in favor of the provisional patent application

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system. Plaintiff did not file a patent application for the heliatomic generator until 2006.

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Plaintiff’s application was published in 2008 but was ultimately denied in 2009. The denial

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was based on several determinations made by the USPTO examiner. Additionally, the examiner

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listed five other patents that the examiner believed rendered plaintiff’s application obvious.

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One such patent was issued to Paul Baskis. Plaintiff alleges that the Baskis patent was similar

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to plaintiff’s heliatomic generator. Based on these similarities, plaintiff alleges that the USPTO

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was involved in a conspiracy to deprive him of his invention. Plaintiff alleges that the USPTO

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failed to destroy his 1993 disclosure document and instead leaked the disclosure document to

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Baskis. Plaintiff further alleges that Baskis then obtained a patent in 1998 on an invention

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that was rightfully plaintiff’s. Plaintiff brought his claims administratively to the USPTO.

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After conducting an investigation, the USPTO denied plaintiff’s claim and advised plaintiff he
had six months to file a claim for relief with the district court.

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For the Northern District of California

United States District Court

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ANALYSIS

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Plaintiff asserts four claims for relief against the USPTO including violation of the

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Economic Espionage Act, criminal mail fraud, Fourteenth Amendment deprivation of due

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process and civil RICO. For the reasons stated below, all four of plaintiff’s claims are

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dismissed.

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1.

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Plaintiff’s first claim for relief alleges the USPTO violated the Economic Espionage Act.

FIRST CLAIM.

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The EEA is a criminal statute and generally only the United States government may bring

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criminal charges against a defendant for a violation of a criminal statute. There is no court

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of appeals decision on point but this order will follow the holding in Masoud v. Suliman,

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816 F. Supp. 2d 77, 80 (D.D.C. 2011). This decision found that the EEA is a criminal statute

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and does not afford a private right of action to any civil plaintiff. Therefore, plaintiff has

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failed to state a claim upon which relief may be granted. Accordingly, plaintiff’s first claim

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is dismissed.

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2.

SECOND CLAIM.

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Plaintiff’s second claim for relief makes reference to the wire fraud and the honest

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services fraud statutes. Our court of appeals has not issued a binding decision on point,

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therefore, this order will follow persuasive authority from this district. Although it is unclear
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whether plaintiff is bringing a claim for relief under either of these statutes, neither statute

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confers a private right of action. Cobb v. Consunju, 2011 WL 4506811, *4 (N.D. Cal. Sept. 27,

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2011) (Ryu, M.J.) (holding no private right of action for wire fraud); Estate of Mohammed ex rel.

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Wideman v. City of Morgan Hill, 2012 WL 2150309, *6 (N.D. Cal. June 12, 2012) (Davila, J.)

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(holding no private right of action for honest services fraud). Accordingly, claim two is

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dismissed as to plaintiff’s wire and honest services fraud allegations.

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Plaintiff’s second claim also alleges that the USPTO violated 42 U.S.C. 1983 by denying

not a state actor. Although not pled by plaintiff, the federal equivalent to 42 U.S.C. 1983 would

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be a Bivens action. Plaintiff, however, cannot bring a Bivens action against the USPTO as it is

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For the Northern District of California

him due process of law. The USPTO cannot be subject suit under 42 U.S.C. 1983 because it is

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United States District Court

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a federal agency and not an individual. F.D.I.C. v. Meyer, 510 U.S. 471, 478 (1994). In his

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opposition, plaintiff contends that pursuant to the Federal Tort Claims Act the federal

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government has consented to waive sovereign immunity. Plaintiff’s complaint does not indicate

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that he is bringing any claim pursuant to the FTCA. Even if plaintiff had brought his second

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claim under the FTCA, the USPTO is nonetheless immune from such a claim. A plaintiff may

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not bring suit under the FTCA by alleging that the underlying tort is a violation of the Fourteenth

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Amendment. “[T]he United States simply has not rendered itself liable under [the FTCA] for

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constitutional tort claims.” Ibid. Accordingly, plaintiff’s second claim is dismissed.
THIRD CLAIM.

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3.

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Plaintiff’s third claim for relief cites 18 U.S.C. 1341 and alleges the USPTO violated the

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criminal mail fraud statue. The criminal mail fraud statute, like the EEA, is a criminal statute

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and does not afford a private right of action. Wilcox v. First Interstate Bank of Oregon, N.A.,

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815 F.2d 522, 533 n. 1 (9th Cir. 1987) (“Other than in the context for RICO, appellate courts

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hold that there is no private right of action for mail fraud under 18 U.S.C. § 1341”). As a result,

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plaintiff has failed to state a claim for which relief can be granted. Accordingly, plaintiff’s third

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claim is dismissed.

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4.

FOURTH CLAIM.

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Plaintiff’s fourth claim alleges that the USPTO violated civil RICO. Civil RICO is a

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general statute that does not mention, much less waive, sovereign immunity. Taxpayers of

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United States v. Bush, 2004 WL 3030076 (N.D. Cal. Dec. 30, 2004) (Illston, J.); see also

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Berger v. Pierce, 933 F.2d 393, 397 (6th Cir.1991) (“[I]t is clear that there can be no RICO claim

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against the federal government”). Accordingly, plaintiff”s fourth claim is dismissed.
CONCLUSION

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scheduled for November 29, 2012, is VACATED.
Plaintiff may seek leave to amend and will have 21 CALENDAR DAYS from the date of this

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For the Northern District of California

United States District Court

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For the above-stated reasons, the USPTO’s motion to dismiss is GRANTED. The hearing

order to file a motion, notice on the normal 35-day track, for leave to file an amended complaint

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in order to further develop his claims. A proposed amended complaint must be appended to

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the motion and plaintiff must plead his best case. The motion should clearly explain how the

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amendments to the complaint state a claim for relief.

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IT IS SO ORDERED.

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Dated: November 20, 2012.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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