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Conspiracy to Infringe – Not a Separate Cause of Action

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In , Magistrate Thynge found that federal patent claims preempt any separate claim alleging conspiracy to infringe a patent. C.A. No. 01-752 (D. Del. Mar. 6, 2007) (Thynge, J.).

Ventana moved to dismiss Digene’s count for civil conspiracy which alleged:

65. The foregoing allegations of this amended complaint
are incorporated by reference.
66. Ventana and Beckman have combined and conspired
for an unlawful purpose, i.e., patent infringement and inducement to infringe the ‘332 and ‘331 patents
and to evade their discovery obligations, with the intent to injure Digene.
67. As a direct and proximate result of the civil
conspiracy, Digene has been injured by Ventana and
Beckman in an amount to be proven at trial.

(D.I. 174, Paras. 65-67). Digene separately alleged a count for tortious interference with Digene’s business opportunities. The Court chose not to rely on two non-precedential cases cited by the Plaintiff that they argued found that the Federal Circuit has allowed separate claims for civil conspiracy to commit patent infringement. Instead, the Court relied on the Federal Circuit’s decision in Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294 (Fed. Cir. 1999) which held that patent law claims will not preempt other state law causes of action if they “include additional elements not found in the federal patent law cause of action and if they are not an impermissible attempt to offer patent-like protection to subject matter addressed by federal law.” Id. at 10. The Court also found persuasive various other district court cases that found that although the conspiracy issue may be relevant to a damages claim, it is not a separate ground for recovery. Id. at 10-11. Digene’s claim for civil conspiracy did not contain any additional elements outside their cause of action for patent infringement and therefore the court found that the federal patent laws preempt any such claim. Id. at 12. As a side note, the Court found the fact that the Plaintiff’s incorporated by reference all earlier allegations in their Complaint, including the claim for tortious interference with business opportunity, was a “shotgun” attempt to bootstrap its allegations regarding tortious interference into its civil conspiracy count. Id. at 7n.36. Furthermore, their allegation that Defendants’ conspired to evade their discovery obligations was also dismissed because “the Federal Rules of Civil Procedure do not create a private cause of action.” Id. at 14.

Note to plaintiffs out there: do not rely on incorporation by reference to get prior allegations into a specific count and know that your separate claim for civil conspiracy of patent infringement will not stand up in Delaware without any other additional grounds outside those included in the federal patent laws.

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