United States District Court for the Eastern District of Louisiana · 2012-12-14
Case and law context
Role: background; posture: civil RICO between competing snowball-supply businesses; Rule 12(b)(6) motion to dismiss the RICO counts for failure to plead predicate acts; mail fraud (with wire fraud, analysed together) is an alleged predicate, not a claim in its own right; motion granted; result: claimant-lost; claim:
Instances and excluded annotation blocks
| Case | Element | Holding and scope | Variant | Exact source quotations |
|---|---|---|---|---|
| /f-supp-2d/912/0404-01 — United States District Court for the Eastern District of Louisiana · 2012 | Mailing for execution of the scheme | not_reached Excluded from merits counts background / merits | Unspecified variant | No source quotation recorded for this block. |
| /f-supp-2d/912/0404-01 — United States District Court for the Eastern District of Louisiana · 2012 | Knowing participation with intent to defraud | not Excluded from merits counts background / merits basis: pleaded; theory: displaying a lapsed third-party safety certification (ETL) on machines; Rule 9(b) particularity; subject: theory=displaying a lapsed third-party safety certification (ETL) on machines; Rule 9(b) particularity Dismissed in one conclusory sentence: lapse in 2010 plus stickers still on machines in 2011 does not plead fraudulent intent with Rule 9(b) particularity. The court does not say what is missing (the defendants had argued no allegation that stickered machines were made after the lapse). | particularity/lapsed-safety-certification-sticker-still-displayed | In 2010, SnoWizard’s ice-shaving machine allegedly fell out of compliance with ETL and its certification lapsed. However, as of August 5, 2011, Plaintiffs maintain that SnoWizard ice-shaving machines still displayed stickers indicating ETL certification.Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [13239:13493] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995.Therefore, both RICO mail fraud and wire fraud “require evidence of intent to defraud, i.e., evidence of a scheme to defraud by false or fraudulent pretenses.”Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [34755:34914] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995.The Fifth Circuit requires that the allegations of fraud be plead with particularity, including “the who, what, when, where, and how.”Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [40257:40391] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995.These allegations are insufficient to plead the requisite “evidence of intent to defraud” with the particularity required to state a claim for RICO mail or wire fraud.Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [40701:40868] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995. |
| /f-supp-2d/912/0404-01 — United States District Court for the Eastern District of Louisiana · 2012 | Statutory mailing or carrier act | not_reached Excluded from merits counts background / meritsPlaintiffs asserted 41 specific dated mail or wire communications; the court never reaches the mailing element because no scheme to defraud is pleaded. | Unspecified variant | No source quotation recorded for this block. |
| /f-supp-2d/912/0404-01 — United States District Court for the Eastern District of Louisiana · 2012 | Material deception | not_reached Excluded from merits counts background / merits | Unspecified variant | No source quotation recorded for this block. |
| /f-supp-2d/912/0404-01 — United States District Court for the Eastern District of Louisiana · 2012 | Traditional money or property as an object | not Excluded from merits counts background / merits basis: pleaded; party: United States Patent and Trademark Office (the party deceived); theory: false statements to the USPTO to obtain patents and trademark registrations; subject: party=United States Patent and Trademark Office (the party deceived); theory=false statements to the USPTO to obtain patents and trademark registrations CLAIM ACTUALLY BROUGHT: civil RICO (18 U.S.C. 1962, private action under 1964(c)). Mail fraud is only an alleged predicate act under 1961(1), analysed jointly with wire fraud (1343) ("the same analysis applies to each"); there is no 1341 charge or claim. Case-level role is therefore background: every decided block in this file is a ruling that a RICO predicate was not pleaded, not a 1341 instance. A patent or trademark registration in the agency's hands is not government property, so lying to the USPTO to get one is not mail fraud (following the Federal Circuit's Semiconductor Energy). Bridge (no first-party reliance needed for RICO causation) does not change the property requirement. Injured competitors are the RICO plaintiffs but not the party deceived. | government-license/patent-or-trademark-registration-obtained-by-false-statements | In 2004, Sciortino applied for a patent on the ratchet linkage, allegedly listing only himself as the inventor and failing to disclose the parts’ public use and sale for more than one year before the application was filed.Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [6184:6406] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995.According to Plaintiffs, SnoWizard copied the flavor without authorization, used the flavor with no claim of exclusivity for approximately five years, and then applied for and received federal trademark registration in May 2004.Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [8504:8732] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995.According to Plaintiffs, Defendants made numerous false representations to the USPTO in order to obtain patents and trademark registrations to which they were not entitled.Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [35115:35287] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995.Even if these allegations are all true, which the Court must assume when deciding a motion to dismiss, controlling authority clearly states that “inequitable conduct before the PTO cannot qualify as an act of mail fraud or wire fraud for purposes of the predicate act requirement,” because such conduct did not “ ‘defraud’ the government of any ‘property.’”Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [35909:36266] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995.But, Semiconductor Energy Laboratory Co. precludes a finding that Defendants committed mail and wire fraud on the basis of fraudulent statements to the USPTO.Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [38095:38253] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995. |
| /f-supp-2d/912/0404-01 — United States District Court for the Eastern District of Louisiana · 2012 | Scheme or artifice to defraud | not Excluded from merits counts background / merits basis: pleaded; party: customers and competitors (recipients of the representations); theory: asserting the fraudulently obtained patent and trademark rights in the marketplace (advertising, cease-and-desist letters, internet postings); subject: party=customers and competitors (recipients of the representations); theory=asserting the fraudulently obtained patent and trademark rights in the marketplace (advertising, cease-and-desist letters, internet postings) The court treats marketplace assertions of IP rights as derivative of the non-actionable fraud on the USPTO, adding that misrepresentations of law cannot ground fraud. It does not separately analyse the allegation that the whole machine was advertised as "patented" when no such patent ever existed, which does not depend on any USPTO filing. | misrepresentation-of-legal-rights/asserting-intellectual-property-rights-against-competitors | According to Plaintiffs, SnoWizard filed a patent application for the entirety of the ice-shaving machine in 1942, which was denied; however, the words “patent pending” were displayed on the door of the machines from 1942 to 1984, at which time the molding on the door was altered to read “patented,” and SnoWizard’s promotional literature also claimed the machine was patented.Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [4911:5289] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995.SnoWizard then sent cease and desist letters to manufacturers and distributors on the basis of its registered trademarks.Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [8117:8238] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995.Based on the patents SnoWizard claimed on its ice-shaving machines, Plaintiffs allegedly stopped purchasing, distributing, selling, and using ice-shaving machines that were not of the SnoWizard brand.Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [6637:6837] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995.This position is further buttressed by the general rule that fraud cannot be predicated upon misrepresentations of law.Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [37078:37197] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995.However, Plaintiffs must still plead a scheme to defraud upon which the predicate acts of mail or wire fraud may be based.Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [37857:37979] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995.Therefore, since the underlying alleged fraud on the USPTO does not constitute mail or wire fraud, SnoWizard’s representations to customers and competitors regarding its intellectual property rights cannot constitute RICO violations.Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [36844:37077] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995. |
| /f-supp-2d/912/0404-01 — United States District Court for the Eastern District of Louisiana · 2012 | Scheme or artifice to defraud | not Excluded from merits counts background / merits basis: pleaded; theory: infringement of the plaintiffs' trademarks, coupled with fraud on the USPTO; subject: theory=infringement of the plaintiffs' trademarks, coupled with fraud on the USPTO | deceptive-element/ordinary-trademark-infringement-recast-as-fraud | Although the owners of “FLAVOR SNOW” and Southern Snow .claimed a trademark in “SILVER FOX” by affixing a “TM” to the term in promotional materials, SnoWizard began using the “SILVER FOX” trademark in commerce without authorization, claiming it as a “SnoWizard Original.”Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [9199:9470] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995.Likewise, the Court notes that Plaintiffs were unable to cite any cases where patent or trademark infringement constituted mail or wire fraud, for purposes of the predicate act requirement.Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [38627:38816] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995.Johnson Electric suggests that ordinary infringement claims cannot constitute mail or wire fraud because there is no deceptive element, which is required to establish a scheme to defraud.Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [39149:39336] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995.Thus, ordinary trademark infringement in conjunction with fraud on the USPTO cannot constitute the scheme to defraud required by the mail and wire fraud statutes.Source: docroot/ir/caselaw/f_supp_2d_912.jsonl#/f-supp-2d/912/0404-01; Unicode character offsets [40022:40184] (end exclusive); SHA-256 6eaf3112cfa04086c45f52ab5af031aa20d0fa445b4daf174c56aeda76084995. |