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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1 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE NORTHERN DISTRICT OF CALIFORNIA 8 9 MARCUS TAYLOR, 11 For the Northern District of California United States District Court 10 12 13 14 15 Plaintiff, No. C 12-03851 WHA v. UNITED STATES PATENT AND TRADEMARK OFFICE, ORDER GRANTING MOTION TO DISMISS AND VACATING HEARING Defendant. / 16 17 INTRODUCTION 18 In this civil action, defendant seeks to dismiss pro se plaintiff’s complaint. For the 19 20 21 following reasons, defendant’s motion to dismiss is GRANTED. BACKGROUND Plaintiff Marcus Taylor submitted a disclosure document to defendant United States 22 Patent and Trademark Office in 1993 that described an invention called a heliatomic generator. 23 A disclosure document was a document filed by an inventor with the USPTO that described 24 the invention with the purpose of providing proof of conception date. If two years had passed 25 without a patent application being filed, then the document was destroyed. The disclosure 26 document program was discontinued in 2007 in favor of the provisional patent application 27 system. Plaintiff did not file a patent application for the heliatomic generator until 2006. 28 Plaintiff’s application was published in 2008 but was ultimately denied in 2009. The denial 1 was based on several determinations made by the USPTO examiner. Additionally, the examiner 2 listed five other patents that the examiner believed rendered plaintiff’s application obvious. 3 One such patent was issued to Paul Baskis. Plaintiff alleges that the Baskis patent was similar 4 to plaintiff’s heliatomic generator. Based on these similarities, plaintiff alleges that the USPTO 5 was involved in a conspiracy to deprive him of his invention. Plaintiff alleges that the USPTO 6 failed to destroy his 1993 disclosure document and instead leaked the disclosure document to 7 Baskis. Plaintiff further alleges that Baskis then obtained a patent in 1998 on an invention 8 that was rightfully plaintiff’s. Plaintiff brought his claims administratively to the USPTO. 9 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. 11 For the Northern District of California United States District Court 10 ANALYSIS 12 Plaintiff asserts four claims for relief against the USPTO including violation of the 13 Economic Espionage Act, criminal mail fraud, Fourteenth Amendment deprivation of due 14 process and civil RICO. For the reasons stated below, all four of plaintiff’s claims are 15 dismissed. 16 1. 17 Plaintiff’s first claim for relief alleges the USPTO violated the Economic Espionage Act. FIRST CLAIM. 18 The EEA is a criminal statute and generally only the United States government may bring 19 criminal charges against a defendant for a violation of a criminal statute. There is no court 20 of appeals decision on point but this order will follow the holding in Masoud v. Suliman, 21 816 F. Supp. 2d 77, 80 (D.D.C. 2011). This decision found that the EEA is a criminal statute 22 and does not afford a private right of action to any civil plaintiff. Therefore, plaintiff has 23 failed to state a claim upon which relief may be granted. Accordingly, plaintiff’s first claim 24 is dismissed. 25 2. SECOND CLAIM. 26 Plaintiff’s second claim for relief makes reference to the wire fraud and the honest 27 services fraud statutes. Our court of appeals has not issued a binding decision on point, 28 therefore, this order will follow persuasive authority from this district. Although it is unclear 2 1 whether plaintiff is bringing a claim for relief under either of these statutes, neither statute 2 confers a private right of action. Cobb v. Consunju, 2011 WL 4506811, *4 (N.D. Cal. Sept. 27, 3 2011) (Ryu, M.J.) (holding no private right of action for wire fraud); Estate of Mohammed ex rel. 4 Wideman v. City of Morgan Hill, 2012 WL 2150309, *6 (N.D. Cal. June 12, 2012) (Davila, J.) 5 (holding no private right of action for honest services fraud). Accordingly, claim two is 6 dismissed as to plaintiff’s wire and honest services fraud allegations. 7 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 10 be a Bivens action. Plaintiff, however, cannot bring a Bivens action against the USPTO as it is 11 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 9 United States District Court 8 a federal agency and not an individual. F.D.I.C. v. Meyer, 510 U.S. 471, 478 (1994). In his 12 opposition, plaintiff contends that pursuant to the Federal Tort Claims Act the federal 13 government has consented to waive sovereign immunity. Plaintiff’s complaint does not indicate 14 that he is bringing any claim pursuant to the FTCA. Even if plaintiff had brought his second 15 claim under the FTCA, the USPTO is nonetheless immune from such a claim. A plaintiff may 16 not bring suit under the FTCA by alleging that the underlying tort is a violation of the Fourteenth 17 Amendment. “[T]he United States simply has not rendered itself liable under [the FTCA] for 18 constitutional tort claims.” Ibid. Accordingly, plaintiff’s second claim is dismissed. THIRD CLAIM. 19 3. 20 Plaintiff’s third claim for relief cites 18 U.S.C. 1341 and alleges the USPTO violated the 21 criminal mail fraud statue. The criminal mail fraud statute, like the EEA, is a criminal statute 22 and does not afford a private right of action. Wilcox v. First Interstate Bank of Oregon, N.A., 23 815 F.2d 522, 533 n. 1 (9th Cir. 1987) (“Other than in the context for RICO, appellate courts 24 hold that there is no private right of action for mail fraud under 18 U.S.C. § 1341”). As a result, 25 plaintiff has failed to state a claim for which relief can be granted. Accordingly, plaintiff’s third 26 claim is dismissed. 27 28 3 1 4. FOURTH CLAIM. 2 Plaintiff’s fourth claim alleges that the USPTO violated civil RICO. Civil RICO is a 3 general statute that does not mention, much less waive, sovereign immunity. Taxpayers of 4 United States v. Bush, 2004 WL 3030076 (N.D. Cal. Dec. 30, 2004) (Illston, J.); see also 5 Berger v. Pierce, 933 F.2d 393, 397 (6th Cir.1991) (“[I]t is clear that there can be no RICO claim 6 against the federal government”). Accordingly, plaintiff”s fourth claim is dismissed. CONCLUSION 7 8 9 scheduled for November 29, 2012, is VACATED. Plaintiff may seek leave to amend and will have 21 CALENDAR DAYS from the date of this 11 For the Northern District of California United States District Court 10 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 12 in order to further develop his claims. A proposed amended complaint must be appended to 13 the motion and plaintiff must plead his best case. The motion should clearly explain how the 14 amendments to the complaint state a claim for relief. 15 16 IT IS SO ORDERED. 17 18 Dated: November 20, 2012. WILLIAM ALSUP UNITED STATES DISTRICT JUDGE 19 20 21 22 23 24 25 26 27 28 4

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