United States Court of Appeals for the Federal Circuit 

2007-1272, -1356 

800 ADEPT, INC., 

Plaintiff-Appellee, 

v. 

MUREX SECURITIES, LTD., MUREX LICENSING CORPORATION, 

TARGUS INFORMATION CORPORATION, and WEST CORPORATION, 

Defendants-Appellants. 

Stephen D. Milbrath, Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A., of Orlando, 

Florida, argued for plaintiff-appellee. With him on the brief were Brian R. Gilchrist and 

Stephen H. Luther. 

 William F. Lee, Wilmer Cutler Pickering Hale and Dorr, LLP, of Boston, 

Massachusetts, argued for defendants-appellants. With him on the brief were Lisa J. 

Pirozzolo and Benjamin M. Stern, and Paul R.Q. Wolfson, of Washington, DC. 

 

Appealed from: United States District Court for the Middle District of Florida 

Chief Judge Patricia C. Fawsett 
United States Court of Appeals for the Federal Circuit 

2007-1272, -1356 

800 ADEPT, INC., 

 Plaintiff-Appellee, 

v. 

MUREX SECURITIES, LTD., MUREX LICENSING CORPORATION, 

TARGUS INFORMATION CORPORATION, and WEST CORPORATION, 

 Defendants-Appellants. 

Appeals from the United States District Court for the Middle District of Florida in case 

no. 6:02-CV-1354, Chief Judge Patricia C. Fawsett. 

__________________________ 

DECIDED: August 29, 2008 

__________________________ 

Before GAJARSA, Circuit Judge, PLAGER, Senior Circuit Judge, and DYK, Circuit 

Judge. 

Opinion for the court filed by Senior Circuit Judge Plager. Circuit Judge Dyk concurs in 

the result. 

PLAGER, Senior Circuit Judge. 

This patent case involves technology for routing “1-800” telephone calls to an 

appropriate service location, e.g., the service provider closest to the customer who 

placed the call. Plaintiff 800 Adept, Inc. (“Adept”) and Defendant Targus Information 

Corporation (“Targus”) sell competing services that are used to route calls made to 800 

numbers, and both companies own patents covering systems and methods for call 

routing. Their customers include owners of 800 numbers, such as Enterprise Rent-A-
Car and Pizza Hut, as well as providers of telecommunications ‘platforms’1

 that route 

800 calls for such businesses. 

In 2002, Adept sued Targus, its affiliated companies Murex Securities, Ltd. and 

Murex Licensing Corporation, and its customer West Corporation2

 in the United States 

District Court for the Middle District of Florida, alleging that services sold by Targus 

infringed two patents owned by Adept.3

 Adept further alleged that Targus had tortiously 

interfered with Adept’s business relationships by asserting Targus’s patents against 

Adept’s customers. Targus filed counterclaims alleging that Adept’s call routing 

services infringed various claims in several Targus patents.4

After a 24-day jury trial, the jury’s verdict essentially found for plaintiff Adept on 

all issues. The jury found that Targus willfully infringed the asserted claims of Adept’s 

patents and that Adept did not infringe the asserted claims of Targus’s patents. The 

jury found that all the asserted claims of Targus’s patents were invalid and further found 

that the unasserted claims of Targus’s ’897 patent and ’131 patent were invalid as well. 

The jury also found Targus liable under state law for tortious interference with Adept’s 

 1

 A platform is one or more computers linked to a long distance or local 

telecommunications network and is used to handle telephone calls requiring special 

services. 

2

 The Defendants will be collectively referred to as “Targus” throughout the 

remainder of this opinion unless otherwise indicated. 

3

 The Adept patents at issue in this case are U.S. Patent No. Re. 36,111 

(“the ’111 patent”), which is a reissue of U.S. Patent No. 5,588,048, and U.S. Patent No. 

5,805,689 (“the ’689 patent”), collectively referred to as the “Neville patents.” 

4

 The Targus patents at issue are U.S. Patent No. 4,757,267 (“the ’267 

patent” or “Riskin patent”) and U.S. Patent Nos. 5,506,897 (“the ’897 patent”), 5,848,131 

(“the ’131 patent”), 5,901,214 (“the ’214 patent”), 5,907,608 (“the ’608 patent”), 

5,910,982 (“the ’982 patent”), 5,956,397 (“the ’397 patent”), 5,982,868 (“the ’868 

patent”), 6,058,179 (“the ’179 patent”), and 6,091,810 (“the ’810 patent”), collectively 

referred to as the “Moore-Shaffer patents.” 

2007-1272, -1356 2
business relationships. The jury awarded Adept $18 million for patent infringement and 

$7 million on the tortious interference claim. 

The trial court entered judgment on the jury verdict, issued a permanent 

injunction, and awarded enhanced damages of $24 million on the patent infringement 

claim, bringing the total damages award to $49 million. The trial court also determined 

that the case was exceptional and therefore Adept was entitled to attorney fees under 

35 U.S.C. § 285. 

After thorough consideration of all the issues in the case, we conclude that the 

trial court erred regarding a critical claim construction issue in the Adept patents, one 

that permitted the jury to make incorrect findings. Under the correct claim construction, 

no reasonable jury could find that Targus infringes the asserted claims of Adept’s 

patents; accordingly, we reverse the trial court’s judgment of infringement. For the 

reasons we shall explain, we also reverse the trial court’s judgment for Adept on its 

tortious interference claim. In light of these determinations, we vacate the trial court’s 

damages award, the permanent injunction, and the judgment with respect to willfulness, 

enhanced damages, and attorney fees. 

Regarding the Targus patents, with two exceptions we affirm the trial court’s 

judgment upholding the jury’s verdict that the asserted claims of Targus’s patents are 

invalid; for the reasons we explain, we vacate the invalidity judgment on two of the 

asserted claims of Targus’s patents and remand for a new trial on these claims. 

Because the validity of the unasserted claims of Targus’s patents was not at issue 

during the trial, we vacate the trial court’s invalidity judgment with respect to all of those 

claims. 

2007-1272, -1356 3
BACKGROUND 

The patents at issue in this case relate to technology for routing telephone calls 

made to 800 numbers. Typically when a caller dials an 800 number, the long distance 

carrier (“LDC”) handling the call must identify the 10-digit telephone number, known as 

a “Plain Old Telephone System” (“POTS”) number, to which to route the call. (A POTS 

number has the form NPA-NXX-XXXX, where NPA is the area code and NXX is the 

exchange.) If all calls to a particular 800 number are to be routed to a single location, 

the process is relatively simple. Some businesses, however, advertise a single 800 

number but have multiple service locations. When a caller dials the 800 number of one 

of these businesses, the LDC must have some way to determine the POTS number of 

an appropriate service location. For example, if the 800 number is for a chain of pizza 

restaurants, the correct service location could be the closest restaurant or one that 

delivers within the geographic area in which the caller is located. 

Plaintiff Adept owns the ’111 patent and its divisional, the ’689 patent, both of 

which claim priority to an application filed on July 31, 1992. The two patents, referred to 

as the Neville patents, are entitled “Geographically Mapped Telephone Routing Method 

and System,” and have virtually identical written descriptions.5

 The Neville patents 

disclose a method for directly routing an 800 call to the appropriate service location 

based on the caller’s 10-digit telephone number (NPA-NXX-XXXX), sometimes referred 

to as the Automatic Number Identification (“ANI”). The invention involves the 

construction of a database that assigns a service location POTS number to every 

potential caller according to geographic criteria provided by the owner of the 800 

 5

 For convenience, this opinion cites only to the written description of the 

’111 patent. 

2007-1272, -1356 4
number. This database can be provided to the LDC, which then routes calls made to 

the 800 number according to the routing instructions in the database. The process is 

summarized in the patent’s abstract: 

A method and system for direct routing of telephone calls made by a caller 

originating from within specific calling areas to one of a plurality of 

locations of a second party according to certain criteria established by the 

second party. This routing is accomplished based on the assignment of 

latitude and longitude coordinates to a potential caller's location. Once 

these coordinates are assigned to each of the potential callers, the second 

party's criteria is applied to assign the potential caller to a second party. 

Such criteria could be existence within a previously-defined geographic 

area, a custom defined geographic area, or through calculations such as 

the shortest distance between coordinate points. Once all such 

assignments have been made, a database is assembled to be used by a 

long distance carrier for direct routing of telephone calls from callers to an 

assigned second party.

’111 patent, abstract (emphasis added). 

The ’111 patent has five independent claims, and the ’689 patent has one 

independent claim, all of which were asserted by Adept against Targus. Claim 1 and 

claim 17 of the ’111 patent are system claims; claim 9 and claim 29 of the ’111 patent 

are method claims; and claim 41 of the ’111 patent and claim 1 of the ’689 patent are 

directed to a method of constructing a database. Claim 29, a method claim, is 

illustrative of the Adept patent claims: 

29. A method for direct routing a telephone call from a first party who 

has an originating telephone number at a physical location and who dials a 

telephone number including digits uniquely characteristic to a second party 

having a plurality of service locations, said method comprising the steps 

of: 

[a] allocating latitude and longitude coordinates to the physical location of 

all potential first parties; 

[b] defining the boundaries of one or more geographical areas which can 

be of any size and shape according to predetermined criteria, each point 

along said boundaries being defined by latitude and longitude coordinates; 

2007-1272, -1356 5
[c] assigning to the physical location of said potential first parties a 

telephone number of a service location of a second party that will receive 

calls originating from within the boundary of a geographic area in which 

the latitude and longitude coordinates of the physical location of each of 

said potential first parties lie; 

[d] determining the originating telephone number of the first party from 

which said telephone call is to be routed; and 

[e] directly routing said telephone call to a service location of the second 

party assigned to said originating telephone number of the first party by 

said step of assigning. 

’111 patent, col.15 ll.19-45 (emphases and paragraph lettering added). 

Defendant Targus owns two families of patents referred to as the Moore-Shaffer 

patents, which, like the Neville patents, disclose various systems and methods for 

routing 800 calls to an appropriate service location based on the caller’s 10-digit 

telephone number. The first family includes seven patents: the ’897 patent; its 

continuation-in-part, the ’131 patent; its continuation-in-part, the ’868 patent; and its four 

continuations, the ’608 patent, the ’982 patent, the ’397 patent, and the ’810 patent. 

The second family includes the ’214 patent and its continuation, the ’179 patent. 

The earliest Moore-Shaffer patent is the ’897 patent, which claims priority to an 

application filed on February 22, 1993. The ’897 patent, which issued in 1996, was also 

the subject of a reexamination request filed by Adept in 1999. The United States Patent 

and Trademark Office (“PTO”) granted the request and in 2001 issued a reexamination 

certificate, confirming the patentability of all claims. 

The ’897 patent discloses a database containing two tables—a master table and 

a client table—linked by a spatial key. Each record in the master table contains a caller 

telephone number and a corresponding spatial key, such as a nine-digit postal code 

2007-1272, -1356 6
(referred to as “zip+4”). ’897 patent, col.8 l.55 to col.9 l.6. Each record in the client 

table contains a spatial key and the telephone number of a corresponding client service 

location. Id. at col. 9 ll.7-26. The master table is indexed by caller telephone numbers, 

and the client table is indexed by the spatial key, so that when a call is placed the 

system retrieves from the master table the spatial key corresponding to the caller’s 

telephone number and then retrieves from the client table the telephone number of the 

client service location corresponding to that spatial key. Id. at col.10 ll.1-7. The ’897 

patent describes two methods for constructing the client table, one involving radiusdefined service areas and one involving polygon-defined service areas for each service 

location. Id. at col.15 l.52 to col. 28 l.5. The ’131 patent, a continuation of the ’897 

patent, is similar to the ’897 patent but additionally includes a third table containing 

specific service location information, such as store hours, that may be recited to the 

caller by a Voice Response Unit. ’131 patent col.31 ll.27-53. 

With the ’868 patent, a continuation-in-part of the ’131 patent, Moore and Shaffer 

introduced several new embodiments. One of these was a “real-time” system, in which 

spatial calculations are performed during the call to determine the appropriate service 

location for a caller. ’868 patent col.45 l.35 to col.55 l.50. As in the ’897 patent, the 

service area for each client service location can be defined as an area with a radius of 

any size or a polygon of any size and shape. Id. at col.47 ll.14-17. Unlike the two-table 

system first described in the ’897 patent, however, the real-time system does not simply 

retrieve records from tables to obtain a service location for a caller. Instead, after a call 

is placed, the system creates a window key (e.g., a rectangular area defined by 

longitude and latitude coordinates) that is associated with the caller’s location. Id. at 

2007-1272, -1356 7
col.51 ll.26-42. Based on this window key, the system builds a list of potential service 

locations and then performs more detailed spatial calculations to generate a final list of 

service locations whose service areas encompass the caller’s location, in ascending 

order of distance between the caller’s location and the service location. Id. at col.51 l.42 

to col.54 l.45. The claims of the ’868 patent are directed to various aspects of the realtime system and process. 

The four continuations of the ’868 patent—the ’608 patent, ’982 patent, ’397 

patent, and ’810 patent—have the same written description as the ’868 patent. While 

some claims of these patents are directed to the real-time system, many are directed to 

other embodiments, including, for example, a single-table database, referred to as a 

“telephone number to telephone number” (“TNTTN”) table, which is essentially a merger 

of the master and client tables first disclosed in the ’897 patent. 

The second family of Moore-Shaffer patents includes the ’214 patent and ’179 

patent. They disclose spatial key-linked, multi-table databases for providing information 

to callers or service locations. The processes described in the ’214 and ’179 patents for 

applications that require connecting a caller to a service location are similar to the 

process described in the ’131 patent. 

Targus sells services that operate in conjunction with telecommunications 

platforms to route 800 calls. One service, IntelliRouting Express, uses the real-time 

process described in Targus’s ’868 patent to identify the location of a caller and 

determine an appropriate service location after the call is placed and while the caller 

remains on the line. The service provides the telephone number of the correct service 

location to the platform, which then processes the call. Another Targus service, 

2007-1272, -1356 8
Location Express, merely identifies the latitude/longitude location of the caller and 

provides it to the platform, which then uses that information while the caller is on the line 

to perform whatever calculations are necessary to determine an appropriate service 

location. 

Plaintiff Adept alleged that Targus’s IntelliRouting Express and Location Express 

services literally infringe all six independent claims of the Neville patents and several 

dependent claims. Two key claim construction issues before the trial court concerned 

the “directly routing” (paragraph [e] in illustrative claim 29, above) and “assigning” 

(paragraph [c]) limitations in the Neville patents. The case was initially assigned to 

District Judge Antoon, who construed the term “directly routing” in the Neville patents to 

mean “routing a telephone call to another party without a human or computer re-dialing 

or otherwise placing a second call.” 800 Adept, Inc. v. Murex Secs., Ltd., No. 6:02-CV1354, slip op. at 38 (M.D. Fla. May 27, 2005). 

Subsequently, the case was transferred to Chief Judge Fawsett three months 

before trial. On Targus’s motion, she construed the claim language in the “assigning” 

limitation, language that is present in all of the asserted claims of the Neville patents. 

First, she construed the term “potential first parties” as “individuals who can place a 

telephone call but have not yet done so.” 800 Adept, Inc. v. Murex Secs., Ltd., No. 

6:02-CV-1354, slip op. at 16 (M.D. Fla. Aug. 3, 2006). She then construed “assigning” 

as referring to “a designation made prior to the telephone call of the first parties” 

(emphasis added). However, she declined to find that there was a disclaimer of 

calculations made after the call is placed. Id. at 19-22. She further held that the claims 

are not limited to a database containing a single look-up table. Id. at 18-19. 

2007-1272, -1356 9
During trial, a critical issue in Adept’s infringement case against Targus was 

whether Targus’s “real-time” process, which performs spatial calculations during the call 

to determine an appropriate service location, satisfies the “assigning” limitation in the 

claims of the Neville patents. Adept’s counsel argued that the court’s construction of 

the term “assigning” should be modified so the jury would understand it to cover “a 

stored procedure and algorithm in the database that constitutes a, quote, assignment, 

closed quote, but nevertheless makes that calculation while the caller is on-line.” (Trial 

Tr. 254:7-10, Oct. 20, 2006). On the nineteenth day of trial, in response to Adept’s 

argument, and over the objection of Targus’s counsel, Chief Judge Fawsett added a 

sentence to the claim construction. The final jury instruction regarding this limitation 

read: 

The term “assigning” as used in the third element of the claims of 

the ’111 and ’689 Patents refers to “a designation made prior to the 

telephone call of the first parties.” However, the ’111 and ’689 patents do 

not exclude calculations made during the telephone call. 

As we explain more fully below, the addition of the “However . . . ” sentence to the 

assigning limitation changed the dynamic of the trial. 

The jury ruled in Adept’s favor on all of its patent infringement allegations against 

Targus, finding that Targus infringed all six independent claims and the asserted 

dependent claims of the Neville patents and that those claims were not invalid or 

unenforceable. The jury also found that Targus’s infringement was willful.6

 In addition, 

the jury found that Targus tortiously interfered with the business relationships between 

Adept and its customers and further found that Targus acted in bad faith. The jury 

 6

 The jury found that Targus’s customer West infringed the asserted system 

and method claims but not the database claims and further found that West’s 

infringement was not willful. 

2007-1272, -1356 10
awarded Adept $18 million in patent infringement damages and $2 million in 

compensatory damages and $5 million in punitive damages on the tortious interference 

claim. 

Adept also prevailed at trial on all issues related to Targus’s patents. The jury 

found that Adept did not infringe any of the asserted claims of Targus’s patents. 

Regarding the validity of Targus’s patents, the jury determined that all claims of the ’897 

patent and the ’131 patent were invalid, even though Targus asserted only claim 69 of 

the ’897 patent and claims 1 and 50 of the ’131 patent. The jury also found that the 

asserted claims of the other Moore-Shaffer patents were invalid.7

Targus filed a renewed motion for judgment as a matter of law and an alternative 

motion for a new trial, both of which the trial court denied without discussion. The trial 

court awarded Adept an additional $24 million in enhanced patent infringement 

damages in accordance with 35 U.S.C. § 284, bringing the total damages award to $49 

million. The court then entered final judgment and a permanent injunction. The trial 

court also determined that the case was exceptional under 35 U.S.C. § 285 and that 

Adept was entitled to attorney fees, but the court denied the motion for attorney fees 

without prejudice to reassertion after completion of the appellate process. 

Targus appeals the judgment with respect to infringement of Adept’s patents, the 

invalidity of Targus’s patents, tortious interference, and willfulness. Targus also appeals 

the jury’s damages award, the trial court’s award of enhanced damages, and the trial 

court’s determination that Targus was entitled to attorney fees. Finally, Targus 

 7

 The asserted claims of the other Moore-Shaffer patents were claim 19 of 

the ’214 patent, claim 25 of the ’179 patent, claim 46 of the ’868 patent, claims 1 and 20 

of the ’608 patent, claims 4 and 13 of the ’982 patent, claim 1 of the ’397 patent, and 

claim 10 of the ’810 patent. 

2007-1272, -1356 11
challenges the permanent injunction as vague or overbroad. We have jurisdiction 

pursuant to 28 U.S.C. § 1295(a)(1). 

DISCUSSION 

I. Adept Patents 

Targus contends that the trial court erred in failing to enter judgment as a matter 

of law that the accused Targus services do not infringe the asserted claims of the 

Neville patents. Targus focuses on the two claim limitations previously noted—

“assigning” and “directly routing.” Regarding the assigning limitation, Targus argues 

that the trial court erred in modifying its claim construction in a way that allowed Adept 

to argue at trial that the assignment could be done during the call. Under the proper 

construction of “assigning,” Targus maintains, its services do not infringe the claims of 

the Neville patents. Because we agree with Targus that under the correct claim 

construction no reasonable jury could find that Targus’s services perform the 

“assigning” step, we need not address Targus’s arguments with respect to the “directly 

routing” limitation. 

A. Claim Construction—the “Assigning” Limitation 

Targus argues that the claims in the Neville patents require assignment of a 

service location telephone number to the telephone number of each potential caller 

before any call is placed. Adept does not dispute that the assignment must occur 

before a call is placed, but argues that the assigning limitation can be satisfied by 

placing “in or with” a database an algorithm or criteria for determining the correct service 

location, even though the calculations necessary to implement the algorithm or apply 

the criteria are performed during the telephone call. Targus responds that any 

2007-1272, -1356 12
calculations needed to complete the assignment of service location numbers to potential 

callers must occur before the call. The ultimate question, then, is not when the 

assigning step must occur, which the parties agree must be prior to any telephone call, 

but rather what constitutes an assignment. To that end, Targus argues that the trial 

court erred when it added to its original claim construction the “However . . . ” statement 

that the patents “do not exclude calculations made during the telephone call” because 

that allowed the jury to apply Adept’s flawed interpretation. 

Though in claim construction matters we give due weight to a trial court’s claim 

construction, ultimately claim construction is a matter of law the final responsibility for 

which lies with us. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 

1998) (en banc). As usual, we start with the language of the claims themselves. 

Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). The relevant 

language (see, e.g., claim 29 of the ’111 patent, above) is: “assigning to the physical 

location of said potential first parties a telephone number of a service location of a 

second party that will receive calls . . . .”8 ’111 patent col.15 ll.33-35. Use of the word 

“potential” to describe the callers and use of the future tense (“will receive calls”) for the 

recipient points directly to the conclusion that the assigning step must occur before a 

call is placed. The plain language of the claims makes clear that the “assigning” step 

requires that “a telephone number of a service location” be assigned to each potential 

caller. Nothing in the claims suggests that storing an algorithm that will be used to 

determine the telephone number of the correct service location during a telephone call

 8

 The other independent claims either include identical language or refer to 

the “originating telephone number” of said potential first parties (i.e., callers) rather than 

their “physical location.” 

2007-1272, -1356 13
constitutes an assignment of a service location telephone number to a potential caller 

before a telephone call is placed. 

The patents’ written description confirms this. See Phillips, 415 F.3d at 1315-17. 

The Neville patents disclose a method for routing 800 calls using routing instructions 

contained in a database. According to the written description, the database is 

constructed by assigning the telephone number of an appropriate service location to 

each potential caller. ’111 patent fig.1, col.11 ll.42-54. The assignments are made by 

applying customer-provided criteria, such as “existence within a previously-defined 

geographic area, a custom defined geographic area, or through calculations such as the 

shortest distance between coordinate points.” Id. abstract. As summarized in the 

abstract, the patents make clear that assignment of service location telephone numbers 

to potential callers must be completed before a telephone call is ever placed: “Once all 

such assignments have been made, a database is assembled to be used by a long 

distance carrier for direct routing of telephone calls.” Id. (emphasis added). 

The assigning step in the Neville patents results in “direct routing instructions” 

that are submitted to an LDC to be used for routing calls. Adept argues that these 

routing instructions could include stored procedures such as the distance calculations 

mentioned in the abstract. The written description, however, does not support Adept’s 

position. The “routing instructions” are always described as a database containing 

potential caller telephone numbers and corresponding service location telephone 

numbers. Id. col.4 ll.10-12, col.12 ll.48-51. To the extent that procedures like distance 

calculations are implemented or geographic criteria are applied, it is only to construct a 

database containing assignments of service locations telephone numbers to potential 

2007-1272, -1356 14
callers, a step that is completed prior to any call. Nowhere do the patents characterize 

the routing instructions given to an LDC as a stored procedure, algorithm, or criteria to 

be used later during a call to determine an appropriate service location telephone 

number. 

Statements made by the applicant during prosecution reinforce the conclusion 

that any calculations necessary for assigning service location telephone numbers to 

callers must be performed before any calls are placed. See Phillips, 415 F.3d at 1317 

(“[T]he prosecution history can often inform the meaning of the claim language by 

demonstrating how the inventor understood the invention . . . .”). During prosecution of 

the original application that led to the Neville patents, the examiner rejected most of the 

claims as anticipated by a prior art patent to Finucane, et al. (“Finucane”). In response, 

the applicant distinguished Finucane on several grounds, one of which was that 

Finucane “requires . . . a computer [to] perform ‘point of origin’ to ‘point of termination’ 

calculations while a caller is on the line.” J.A. 8572. The applicant contrasted this 

feature with his system, which “performs all such calculations prior to the call even 

being made and, in fact, prior to delivery of the data base to the Long Distance Carrier 

(LDC).” Id.

The examiner maintained his rejection during prosecution of a continuation 

application. In remarks accompanying an amendment in which he canceled all 

independent claims and added new claims, the applicant once again distinguished his 

invention from Finucane: 

The major difference [between the present invention and Finucane] is that 

with the present invention all point of origin to point of termination 

calculations have already been performed by determining in which 

response zone (client-defined polygon) the call originated, and to which 

2007-1272, -1356 15
corresponding terminating number the call should be routed. The results 

of these calculations are stored in a database at the service provider’s 

location. Thus, the present invention eliminates the need to perform online-calculations to determine the appropriate terminating number. 

J.A. 8626 (emphasis added). Thus Adept and Neville repeatedly characterized the 

invention as one in which all calculations necessary for assigning service location 

telephone numbers to callers are performed before any telephone calls are made. 

Adept argues that it is improper to rely on these statements from the prosecution 

history because they are too ambiguous to serve as a “clear and unmistakable” 

disavowal of claim scope. See Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 

1325-26 (Fed. Cir. 2003). Adept points out that the issued claims are quite different 

from those pending at the time the statements were made. Because there is no link 

between the applicant’s arguments and the specific claim language at issue, Adept 

asserts, there can be no disclaimer. 

The doctrine of prosecution disclaimer to which Adept refers is typically invoked 

to limit the meaning of a claim term that would otherwise be read broadly. See id. at 

1324 (“[W]here the patentee has unequivocally disavowed a certain meaning to obtain 

his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary 

meaning of the claim congruent with the scope of the surrender.” (emphasis added)); 

see also Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1325 (Fed. Cir. 2002) (construing 

the broad term “calcium orthophosphate” to exclude monocalcium orthophosphate 

based on prosecution disclaimer although excluded compound was within the ordinary 

and accustomed meaning of the claim term); Southwall Techs., Inc. v. Cardinal IG Co., 

54 F.3d 1570, 1576-77 (Fed. Cir. 1995) (holding that “sputter-deposited dielectric” could 

not be formed by a two-step process because patentee argued during prosecution that 

2007-1272, -1356 16
it was formed by a one-step process). In this case, however, we do not consult the 

prosecution history for that purpose. We simply use it as support for the construction 

already discerned from the claim language and confirmed by the written description, i.e., 

that all calculations necessary to assign a service location telephone number to a 

potential caller are completed before any call is placed. Although the claims pending at 

the time of the quoted statements did not include the “assigning” limitation, the applicant 

was quite clear throughout prosecution that his invention performed calculations for 

assigning service location telephone numbers to callers prior to any call being placed. 

As is true of the written description, nothing in the prosecution history supports Adept’s 

position that a stored algorithm constitutes an assignment of a service location to a 

caller. 

Adept asserts that a claim construction requiring all calculations to be performed 

prior to any telephone calls cannot be correct because even its preferred embodiment 

performs some calculations during the telephone call. Specifically, Adept claims that 

when a call arrives, the Neville system must perform “lookup” calculations to retrieve 

from the database the service location assigned to the caller. Adept fails to recognize, 

however, that these lookup calculations are not part of the assigning step in the Neville 

patents—service location telephone numbers are assigned to callers when the 

database is created, i.e., before any calls take place. Under the correct claim 

construction, only calculations that are necessary to complete the assignment must be 

performed before any calls are made. As long as that requirement is met, the claims do 

not preclude any additional calculations during the telephone call. 

2007-1272, -1356 17
According to Adept, three dependent claims not asserted in the case should 

compel a different claim construction. In these claims—28, 40, and 52 of the ’111 

patent—the originating telephone number is that of a “non-stationary telephone, such as 

a mobile, cellular or transportable telephone.” Adept contends that these mobile 

telephone claims require some sort of spatial calculation at the time of the call to 

determine the correct service location based on the caller’s physical location and 

therefore would be impossible to practice under a claim construction such as the one 

we adopt. 

We are not persuaded. As discussed, the plain language of the independent 

claims requires each potential caller to be assigned a service location telephone number 

before any call is placed. Since the mobile telephone claims depend from the 

independent claims, all potential mobile telephone callers must also be assigned a 

service location before a call is placed. Nothing in the language of the claims indicates 

otherwise. While the claims and the written description appear to contemplate that the 

assignment will be based on the caller’s physical location at the time of the call, the 

written description does not teach a method for doing so. Significantly, the patents do 

not disclose the use of stored algorithms that could be used to assign service location 

telephone numbers during a call from either a mobile telephone or a fixed landline, and 

thus the written description does not support Adept’s proposed construction. 

Furthermore, it is not clear that the mobile telephone claims would be impossible 

to practice under the correct claim construction. Prior to any calls, a service location 

could be assigned to a mobile telephone based on, for example, a physical location 

associated with its NPA-NXX. Be that as it may, we need not resolve this question. 

2007-1272, -1356 18
Even if the mobile telephone claims are rendered inoperative by a proper claim 

construction, preserving the validity of unasserted claims is an insufficient reason to 

ignore the meaning of the claims actually asserted in the case. See Intamin Ltd. v. 

Magnetar Techs. Corp., 483 F.3d 1328, 1337 (Fed. Cir. 2007). 

In sum, based on consideration of the claims, the written description, and the 

remainder of the intrinsic evidence, we conclude that the trial court was correct in the 

first instance when it construed the “assigning” language to refer to “a designation made 

prior to the telephone call of the first parties.” We must also recognize, however, what 

the assignment entails—the telephone number of a service location is assigned to the 

physical location or telephone number of each potential caller. As noted, this 

assignment must be made before any calls are placed. Thus, to the extent any 

calculations are needed to complete the assignment of service location telephone 

numbers to potential callers, they must be performed prior to any calls. 

The trial judge modified the original claim construction by adding that the Neville 

patents “do not exclude calculations made during the telephone call.” That statement is 

imprecise in the context in which it was presented, i.e., as part of the construction of the 

term “assigning,” and allowed Adept to argue before the jury that calculations for 

completing the assigning step could be performed while a caller is on-line, an argument 

that is not consistent with the patented invention. Under the correct claim construction, 

assignment of service location telephone numbers to potential callers must occur prior 

to any calls, and thus any calculations necessary for completing that assignment must 

be performed before any telephone calls are placed. 

2007-1272, -1356 19
B. Infringement 

With the trial court’s modified claim construction before them, the jury found that 

defendant Targus infringed the Neville patents, and the trial court subsequently denied 

a motion by Targus to grant, contrary to the jury’s verdict, judgment as a matter of law in 

Targus’s favor. The question before us is whether the trial judge erred in denying the 

motion. We review the trial court’s denial of Targus’s motion for judgment as a matter of 

law under the law of the regional circuit. z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 

1340, 1346 (Fed. Cir. 2007). Under Eleventh Circuit law, we review the denial of a 

motion for judgment as a matter of law without deference, reapplying the same standard 

applied by the trial court. Christopher v. Florida, 449 F.3d 1360, 1364 (11th Cir. 2006). 

Judgment as a matter of law is appropriate when there is no legally sufficient evidentiary 

basis for a reasonable jury to find in favor of the nonmoving party. Id. When a patent 

infringement verdict is based on an incorrect claim construction, we reverse the trial 

court’s denial of a motion for judgment as a matter of law if no reasonable jury could 

have found infringement under the proper claim construction. Finisar Corp. v. DirecTV 

Group, Inc., 523 F.3d 1323, 1333 (Fed. Cir. 2008). 

In the Targus system, the telephone numbers and locations of potential callers 

are maintained in a database. The system also includes a database for each system 

customer containing the telephone numbers of the customer’s service locations along 

with their corresponding service areas. Those service areas are configured by the 

customer before any calls are placed and may be radius-based (a circle around the 

service location) or defined by polygonal regions around each service location. While 

the Targus system contains information relating to both potential callers and customer 

2007-1272, -1356 20
service locations, it does not match a customer service location to a particular caller 

prior to any calls taking place. Instead, as described in the IntelliRouting Express User 

Guide, callers are assigned to a service location “on the fly” with each telephone call. 

When a call comes into the platform, the Targus system determines the caller’s 

approximate latitude and longitude based on the caller’s ANI. The system then 

computes a rectangular area, referred to as a window key, around that 

latitude/longitude. Next the system identifies a list of candidate service locations whose 

service areas overlap the window key. For each candidate, the system performs a 

detailed spatial calculation, either a distance computation or “point-in-polygon” 

calculation, to determine whether the caller’s location is within the service area. This 

results in a list of one or more service locations to which the call may be routed. 

Thus the accused Targus services do not assign service location telephone 

numbers to potential callers before calls are placed. Because all calculations necessary 

to complete the assignment are performed in real-time while the caller is on the line, the 

Targus services do not satisfy the “assigning” limitations in the Neville claims. Under 

the correct claim construction, no reasonable jury could find that Targus infringes the 

asserted claims of Adept’s patents. Accordingly, we reverse the trial court’s denial of 

Targus’s motion for judgment of non-infringement as a matter of law. In light of that 

result, we vacate the infringement damages award and the permanent injunction; we 

also vacate the trial court’s judgment with respect to willfulness and attorney fees. 

2007-1272, -1356 21
II. Targus Patents 

A. Unasserted Claims 

The jury found that all claims of the ’897 patent and ’131 patent were invalid, and 

the trial court entered judgment accordingly. Targus argues that the trial court erred 

because only claim 69 of the ’897 patent and claims 1 and 50 of the ’131 patent were 

asserted and at issue. Adept responds that all claims of the two patents were placed in 

issue by the declaratory judgment count in its complaint. If the evidence at trial proved 

that all the claims were invalid, Adept maintains, the trial judge properly entered 

judgment on the jury verdict. 

We agree with Targus that the unasserted claims were not at issue, and thus the 

trial court erred. First, the scope of Adept’s complaint is less than clear. Adept 

requested a declaratory judgment with respect to the invalidity of Targus’s “asserted 

claims,” an apparent reference to Targus’s assertions of infringement against Adept and 

its customers prior to the filing of the lawsuit. (First Am. Compl. ¶¶ 57-58.) The 

complaint does not specify which claims fall into that category. In any event, a 

reference in the complaint is not sufficient to support a judgment that particular claims 

are invalid; the specific validity of those claims must have been at issue during the trial 

and actually litigated by the parties. Datascope Corp. v. SMEC, Inc., 776 F.2d 320, 327 

(Fed. Cir. 1985). 

Second, the parties’ Joint Final Pretrial Statement demonstrates that only claim 

69 of the ’897 patent and claims 1 and 50 of the ’131 patent were at issue during the 

trial. In that document, the parties stipulated that the asserted claims of the ’897 patent 

and ’131 patent were claim 69 and claims 1 and 50, respectively. (Joint Final Pretrial 

2007-1272, -1356 22
Statement 31.) Then, under the heading “Concise Statement of Issues of Fact and 

Issues of Law Which Remain for Determination by the Trial Court,” the parties included 

the following two questions: “Are the asserted claims of the Shaffer-Moore patents 

valid?” and “Are the asserted Shaffer-Moore patents infringed, literally or under the 

doctrine of equivalents?” (Id. at 32-22.) There were no references whatsoever to the 

unasserted claims of the ’897 patent and ’131 patent. 

Third, at trial, neither party presented evidence with respect to the unasserted 

claims. Adept’s expert, Dr. Brody, expressly limited his validity analysis and opinions to 

claim 69 of the ’897 patent and claims 1 and 50 of the ’131 patent. (Trial Tr. 148-49, 

184-85, 198-200, 208-10, 213, Oct. 16, 2006.) This is true with respect to both Adept’s 

anticipation and obviousness contentions and its argument that the claims of the ’131 

patent were invalid due to an on-sale bar. Adept’s argument that it was unnecessary for 

its validity expert to put forth a claim-by-claim analysis of the unasserted claims is 

simply incorrect. Under the patent statute, the validity of each claim must be considered 

separately. See 35 U.S.C. § 282 (“Each claim of a patent (whether in independent, 

dependent, or multiple dependent form) shall be presumed valid independently of the 

validity of other claims . . . .”); Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 

1316 (Fed. Cir. 2002); Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 

1344, 1356 (Fed. Cir. 2001). 

In this case, it is clear from the parties’ pretrial statement and from the trial 

proceedings that the unasserted claims were neither litigated nor placed in issue during 

the trial. We therefore reverse the trial court’s judgment of invalidity with respect to the 

2007-1272, -1356 23
unasserted claims, i.e., all the claims of the ’897 patent except claim 69 and all the 

claims of the ’131 patent except claims 1 and 50.9

B. Asserted Claims 

The jury also found all twelve of the asserted claims in the Moore-Shaffer patents 

invalid. Targus chose not to appeal the trial court’s denial of its motion for judgment as 

a matter of law that the asserted claims are not invalid, and thus does not challenge on 

appeal the sufficiency of the evidence in support of the jury’s verdict. Instead, Targus 

appeals only the trial court’s denial of its motion for a new trial on the validity of these 

claims. Applying Eleventh Circuit law, we review the trial court’s denial of a motion for a 

new trial for abuse of discretion. Hicks v. Talbot Recovery Sys., Inc., 196 F.3d 1226, 

1242 (11th Cir. 1999). When a jury verdict is judged to be against the great weight of 

the evidence, the trial judge has authority to grant a motion for a new trial. Id.; Charles 

Alan Wright, Arthur R. Miller & Mary Kay Kane, Federal Practice and Procedure § 2806 

(2d ed. 1995). 

Targus argues on appeal that the jury’s invalidity findings were “tainted” by the 

erroneous characterization of the Neville patents by Adept’s expert, Dr. Brody. In 

particular, Targus complains that Dr. Brody repeatedly asserted that the Neville patents 

teach real-time spatial calculations of the sort used by Targus and claimed in some of 

the Moore-Shaffer patents. Because Dr. Brody testified that the asserted claims were 

either anticipated by the Neville patents or rendered obvious by the combination of the 

 9

 In light of this conclusion, we need not address Targus’s additional 

argument that the trial court lacked jurisdiction to adjudicate the validity of the 

unasserted claims because there was no case or controversy with respect to those 

claims. 

2007-1272, -1356 24
Neville patents and other prior art, Targus believes it is entitled to a new trial on the 

validity of the asserted claims. 

We agree with Targus, but only in part. Targus requests on appeal a new trial on 

“whether the asserted claims of the Moore-Shaffer patents that concern ‘on line 

calculations’ are invalid.” (Appellant’s Reply Br. 22-23.) In its brief, Targus identifies 

only two asserted claims that involve on-line or real-time calculations—claim 46 of the 

’868 patent and claim 10 of the ’810 patent. (Appellant’s Br. 49-50.) Our review of the 

record confirms that those are the only asserted claims directed to Targus’s real-time 

system. Our review further confirms that Dr. Brody’s testimony with regard to the 

alleged real-time aspect of the Neville patents was directed to the validity of only those 

two claims and not to the other asserted claims. 

As explained above in the discussion on the Adept patents, Dr. Brody’s 

characterization of the scope of the Neville patent disclosure was mistaken. 

Furthermore, the primary if not the entire evidence on which the jury could have relied in 

finding claim 46 of the ’868 patent and claim 10 of the ’810 patent invalid was Dr. 

Brody’s erroneous testimony. Under these circumstances, the trial judge should have 

granted the motion for a new trial with regard to these two claims because the great 

weight of the evidence in the record was against the jury’s verdict. This does not 

preclude the possibility that other evidence produced at a retrial would be sufficient to 

establish invalidity. 

The failure to have granted Targus’s motion was an abuse of discretion; 

accordingly, we vacate the trial court’s judgment that claim 46 of the ’868 patent and 

claim 10 of the ’810 patent are invalid, and remand for a new trial on their validity. We 

2007-1272, -1356 25
affirm the trial court’s judgment that the remaining asserted claims of the Moore-Shaffer 

patents are invalid. 

III. Tortious Interference 

In its suit against Targus, Adept claimed that, because Targus had asserted 

certain of its patent claims against some of Adept’s customers, Targus had tortiously 

interfered with Adept’s business relationships with those customers. This, according to 

Adept, entitled Adept to the state-law remedy available for such an unfair trade practice. 

Targus responded that the state-law remedy is preempted by the federal patent laws. 

The “preemption” issue can be stated thus: if a patentee attempts to enforce its patents 

against a competitor’s customers, under what circumstances, if any, is the patentee 

protected from the usual standards regarding unfair trade practices, imposed by various 

state unfair competition laws, on the theory that the rights accorded a patentee to 

enforce the patent supersede the usual anti-competition rules? See Zenith Elecs. Corp. 

v. Exzec, Inc., 182 F.3d 1340, 1345-46 (Fed. Cir. 1999). 

The answer to the question is now well-established. State tort claims against a 

patent holder, including tortious interference claims, based on enforcing a patent in the 

marketplace, are “preempted” by federal patent laws, unless the claimant can show that 

the patent holder acted in “bad faith” in the publication or enforcement of its patent. Id.

at 1355; Hunter Douglas, Inc. v. Harmonic Design, Inc., 153 F.3d 1318, 1336-37 (Fed. 

Cir. 1998). As the Supreme Court said long ago, “Patents would be of little value if 

infringers of them could not be notified of the consequences of infringement, or 

proceeded against in the courts. Such action, considered by itself, cannot be said to be 

illegal.” Virtue v. Creamery Package Mfg. Co., 227 U.S. 8, 37-38 (1913). 

2007-1272, -1356 26
The issue in this case is whether Adept presented to the jury sufficient facts, if 

believed, that a reasonable jury could find for Adept on the issue of Targus’s bad faith. 

This “bad faith” standard has objective and subjective components. Dominant 

Semiconductors Sdn. Bhd. v. Osram GmbH, 524 F.3d 1254, 1260 (Fed. Cir. 2008). The 

objective component requires a showing that the infringement allegations are 

“objectively baseless.” Globetrotter Software, Inc. v. Elan Computer Group, Inc., 362 

F.3d 1367, 1375 (Fed. Cir. 2004). The subjective component relates to a showing that 

the patentee in enforcing the patent demonstrated subjective bad faith. See id. Absent 

a showing that the infringement allegations are objectively baseless, it is unnecessary to 

reach the question of the patentee’s intent. See id. 

Infringement allegations are objectively baseless if “no reasonable litigant could 

realistically expect success on the merits.” Prof’l Real Estate Investors, Inc. v. 

Columbia Pictures Indus., Inc., 508 U.S. 49, 60 (1993); see also GP Indus., Inc. v. Eran 

Indus., Inc., 500 F.3d 1369, 1374 (Fed. Cir. 2007); Globetrotter, 362 F.3d at 1375-76. 

To prove at trial that Targus’s actions were objectively baseless, Adept was required to 

offer clear and convincing evidence that Targus had no reasonable basis to believe that 

its patent claims were valid or that they were infringed by Adept’s customers. See

Golan v. Pingel Enter., Inc., 310 F.3d 1360, 1371 (Fed. Cir. 2002). Because of the 

value placed on property rights, which issued patents share, see 35 U.S.C. § 261 

(“[P]atents shall have the attributes of personal property.”); Consol. Fruit-Jar Co. v. 

Wright, 94 U.S. 92, 96 (1876) (“A patent for an invention is as much property as a 

patent for land.”); Kearns v. Gen. Motors Corp., 94 F.3d 1553, 1555 (Fed. Cir. 1996) 

(“By statutory and common law, each patent establishes an independent and distinct 

2007-1272, -1356 27
property right.”), and in light of the underlying jurisprudential basis for the bad faith 

standard, rooted as it is in Supreme Court cases and Constitutional principles, see

Globetrotter, 362 F.3d at 1375-77, a party attempting to prove bad faith on the part of a 

patentee enforcing its patent rights has a heavy burden to carry. 

The jury verdict was that Adept had proved its case. Targus appeals the trial 

court’s denial of its motion for judgment as a matter of law, arguing that there was no 

clear and convincing evidence on which a reasonable jury could conclude its actions 

were objectively baseless. On the record before us, for the reasons we shall explain, 

we believe Targus is correct that Adept has not successfully carried its burden. 

We first address the question of whether Targus could have had a reasonable 

belief that its patents were valid, beginning with the ’897 patent. The main dispute 

regarding the validity of the ’897 patent was whether Neville discloses a two-table 

embodiment, which would anticipate the claims of the ’897 patent. While the preferred 

embodiment in Neville uses a single-table TNTTN database, one sentence in the written 

description states that “the correlational database may be relational or hierarchical,” 

which implies that the database could have more than one table. ’111 patent col.9 ll.50-

51. The issue before us is not the validity vel non of the ’897 patent, but whether the 

evidence was such that Targus could not have had a reasonable basis for believing that 

the patent was valid when it asserted the patent against Adept’s customers. 

Adept alleges that Targus knew the disclosure in the Neville patents anticipated 

the claims of the ’897 patent, and that Targus misrepresented the scope of Neville to 

the PTO so that the ’897 patent claims would survive the reexamination requested by 

Adept in 1999. Adept’s argument sounds more like an allegation of subjective bad faith 

2007-1272, -1356 28
on Targus’s part, a question that is not at issue absent the predicate showing that the 

claims asserted by Targus were objectively baseless. Furthermore, none of the 

evidence cited in Adept’s brief supports its theory that Targus acted deceptively. The 

evidence introduced at trial shows that many people, including the examiner who 

conducted the reexamination and even Adept’s own patent attorney, understood Neville 

to disclose only a one-table system. Notably, Targus did not file suit against any of 

Adept’s customers until after reexamination of the ’897 patent had been completed. On 

this record, a reasonable jury could not have found by clear and convincing evidence 

that Targus lacked a reasonable basis to believe that the claims of the ’897 patent were 

not anticipated by Neville. 

Adept also asserts that Targus knew that Neville anticipated Targus’s one-table 

claims—claim 1 of the ’608 patent and claim 4 of the ’982 patent. Targus argues that it 

reasonably believed Neville did not disclose the automated table-build process required 

by the Targus claims. This was a reasonable view, as evidenced by the opinion of 

Targus’s expert at trial that Neville does not teach a fully automated system. The 

contrasting opinion of Adept’s expert does not render Targus’s position unreasonable. 

As with the ’897 patent, we conclude that no reasonable jury could have found that 

Adept met its burden to show that there was no reasonable basis on which Targus 

could believe in the validity of its one-table claims. 

Regarding the ’131 patent, Adept argues that Targus knew it was subject to an 

on-sale bar based on work that Targus did for Federal Express, and that Targus actively 

concealed that information from the PTO. The record indicates, however, that Targus 

reasonably believed that that work was experimental, even if ultimately the jury in this 

2007-1272, -1356 29
case may have found otherwise. Furthermore, during prosecution of the application that 

led to the ’131 patent, Targus submitted a declaration to the PTO detailing the 

development and testing of the FedEx system. Under these circumstances, no 

reasonable jury could find that Adept proved by clear and convincing evidence that 

Targus lacked a reasonable basis for believing that the claims of the ’131 patent were 

not subject to the on-sale bar. 

With respect to Targus’s other patents, Adept alleges that the examiner was led 

astray so that he failed to consider Neville in combination with Riskin or other 

references, even though Neville and Riskin and multiple other references were before 

him. Yet Adept cites no evidence demonstrating that Targus knew its claims were 

invalid for obviousness or showing that Targus somehow caused the examiner not to 

combine prior art references. On this record, no reasonable jury could have found that 

a belief by Targus that its patents were valid had no reasonable basis. 

We must also consider whether there was a basis for Targus to reasonably 

believe that Adept’s customers infringed the Targus patents. Adept essentially argues 

that Targus could not have had a reasonable basis for asserting its patents against 

Adept’s customers because Targus did not succeed at trial on its infringement claims 

against Adept. Courts, however, “must ‘resist the temptation to engage in post hoc

reasoning by concluding’ that an ultimately unsuccessful ‘action must have been 

unreasonable or without foundation.’” Prof’l Real Estate, 508 U.S. at 60 n.5 (quoting 

Christiansburg Garment Co. v. EEOC, 434 U.S. 412, 421-22 (1978)); see also

Dominant, 524 F.3d at 1261 & n.6 (citing Prof’l Real Estate, 508 U.S. at 60 n.5). Thus 

2007-1272, -1356 30
the result of Targus’s infringement claims in this case is not dispositive of whether 

Targus’s claims against Adept’s customers were reasonable. 

Targus presented evidence that it reasonably believed Adept’s customers were 

infringing the Targus patents. For instance, Adept admitted that the database it 

provided to two of its customers was in the same format as the database used in the 

Targus system. Also, Targus did not assert its claims against another Adept customer 

until after Targus’s in-house counsel had prepared claim charts explaining Targus’s 

infringement theories. Adept has not cited any contradictory evidence that was 

introduced at trial. On this record, no reasonable jury could find by clear and convincing 

evidence that Targus had no reasonable basis for believing that Adept’s customers 

were infringing its patents. 

Adept’s tortious interference claim with respect to its customer Allstate Motor 

Club (“AMC”) was based on Targus’s infringement claim against its own customer, Vail 

Systems. In providing routing services to AMC, Vail used data received from AMC, 

which included a database that Allstate had received from Adept. After learning about 

this arrangement through discovery in this case, Targus believed that Vail infringed its 

patents and filed claims against Vail, which subsequently sought indemnification from 

AMC. While Adept alleges that Targus and Vail colluded to pressure AMC, Adept fails 

to cite evidence showing that Targus’s belief that Vail infringed its patents was 

unreasonable. As with Targus’s infringement allegations against Adept’s customers, no 

reasonable jury could find that Adept met its burden to show that Targus lacked a 

reasonable basis for believing that Vail infringed its patents. 

2007-1272, -1356 31
2007-1272, -1356 32

In sum, we conclude that there is not clear and convincing evidence on which a 

reasonable jury could find that Targus acted in bad faith by asserting objectively 

baseless patent infringement allegations. Thus Adept’s state-law tortious interference 

claim is preempted by federal patent law. The trial judge erred in denying Targus’s 

motion for judgment as a matter of law on this claim, and we therefore reverse the trial 

court’s judgment. 

CONCLUSION 

We reverse the trial court’s judgment of infringement of the Neville patents. 

Accordingly, we vacate the infringement damages award and the permanent injunction; 

we also vacate the trial court’s judgment with respect to willfulness and attorney fees. 

We reverse the trial court’s judgment of invalidity with respect to the unasserted 

claims of the ’897 patent and ’131 patent. We vacate the trial court’s judgment that 

claim 46 of the ’868 patent and claim 10 of the ’810 patent are invalid and remand for a 

new trial on the validity of those claims. We affirm the invalidity judgment with respect 

to the remaining patent claims asserted by Targus against Adept. 

We reverse the trial court’s judgment on Adept’s tortious interference claim and 

vacate the accompanying award of compensatory and punitive damages. 

AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, and REMANDED

DYK, Circuit Judge, concurs in the result.