OPINION & ORDER

MARCO A. HERNÁNDEZ, District Judge.

Plaintiff Tranxition, Inc. brings this patent infringement action against Defendant Lenovo (United States), Inc., alleging infringement of its United States Patent Nos. 6,728,877 (`877 patent) and 7,346,766 (`766 patent), both of which are titled "Method and System for Automatically Transitioning of Configuration Settings Among Computer Systems." Defendant owns United States Patent No. 6,182,212 (`212 patent), titled "Method and System for Automated Migration of User Settings to a Replacement Computer System." Defendant Lenovo counterclaimed that Plaintiff Tranxition infringes its `212 patent.

Plaintiff filed a motion for order construing terms [138] in the `877 and `766 patents; and Defendant filed a motion for order construing terms [136] in the `212 patent. A two-day hearing was held on August 26-27, 2014. At the conclusion of oral argument, the court resolved the dispute as to all but two of the contested terms or phrases, which were taken under advisement: (1) "format" in the `877 and `766 patents and (2) "adapter" in the `212 patent. On October 15, 2014, the parties submitted written expert testimony for the term "adapter."

On Nov. 24, 2014, Defendant filed an unopposed motion to dismiss its counterclaim for infringement of the `212 patent. The court granted the motion. Nov. 24, 2014 Order [194]. Because of the dismissal of the counterclaim, there is no need to construe the term "adapter" from the `212 patent. For the sole remaining term, the court construes "format" to mean "a specific arrangement of data." Therefore, Plaintiff's motion for order construing claims [138] is granted in part and denied in part, and Defendant's motion for order construing claims [136] is denied as moot.

BACKGROUND

The `877 and `766 patents share a history. The `766 patent is a continuation of the patent application that later became the `877 patent. The two patents share the same title, abstract, and specification. In general, the invention is a method and system for transferring configuration settings, a computer's "personality," from an old computer system to a replacement computer system. The abstract describes the invention as follows:

Compl. Ex. A (`877 patent) at 1, Ex. B (`766 patent) at 1. Plaintiff asserts that Defendant infringes at least claims 1 and 16 of the `877 patent. Compl. ¶¶ 8, 15. Claims 1 and 16 are shown below.

`877 patent, 17:29-62.

Id. at 18:42-19:3.

Plaintiff also asserts that Defendant infringes at least claim 1 of the `766 patent, as stated below.

`766 patent, 17:51-18:8.

CLAIM CONSTRUCTION STANDARDS

I. General Rules

"[T]he construction of a patent, including terms of art within its claim, is exclusively within the province of the court." Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). Claims are construed independently and not simply as a choice between the parties' proposed constructions. Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995). "[C]laims should be so construed, if possible, as to sustain their validity." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984) (citations omitted). The claim language specifies "`the subject matter which the applicant regards as his invention.'" Markman, 517 U.S. at 373 (citing and quoting 35 U.S.C. § 112).

To construe a patent claim, courts look to the language of the claims in the patent itself, the description in the patent's specification, and the prosecution history of the patent, all of which constitute a record "on which the public is entitled to rely." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); see also Dow Chem. Co. v. Sumitomo Chem. Co., 257 F.3d 1364, 1372 (Fed. Cir. 2001). Claim language is given its "ordinary and accustomed meaning as understood by one of ordinary skill in the art." Dow Chem. Co., 257 F.3d at 1372 (citation omitted). Courts cannot rewrite claims, but must "give effect to the terms chosen by the patentee." K-2 Corp. v. Solomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999) (citation omitted). In most cases, the court should be able to resolve ambiguous claim terms by only analyzing the intrinsic evidence. See Phillips v. AWH Corp., 415 F.3d 1303, 1313-14 (Fed. Cir. 2005) (en banc).

II. Claim Language

"The actual words of the claim are the controlling focus." Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344 (Fed. Cir. 1998). The starting point for claim construction is a disputed term's ordinary meaning. Phillips, 415 F.3d at 1313. Ordinary meaning, in the patent claim construction context, is the meaning that a person of ordinary skill in the art would attribute to a claim term in the context of the entire patent at the time of the invention, i.e., as of the effective filing date of the patent application. ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1374 (Fed. Cir. 2009).

There is a "heavy presumption" that a claim term carries its "ordinary and customary meaning," and any party seeking to convince a court that a term has some other meaning "must, at the very least," point to statements in the written description that "affect the patent's scope." Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999) (quotation marks omitted). This may be accomplished if: (1) "a different meaning is clearly and deliberately set forth in the intrinsic materials" of the patent or (2) use of "the ordinary and accustomed meaning . . . would deprive the claim of clarity. . . ." K-2 Corp., 191 F.3d at 1363. In making this assessment, the court should use common sense and "the understanding of those of ordinary skill in the art" of the patent at issue, unless the patent history supplies another meaning. Id. at 1365; Digital Biometrics, 149 F.3d at 1344.

"An accused infringer may overcome this `heavy presumption' and narrow a claim term's ordinary meaning, but he cannot do so simply by pointing to the preferred embodiment or other structures or steps disclosed in the specification or prosecution history." CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). As clarified by the Federal Circuit:

Id. at 1366-67 (quotation marks omitted).

III. The Patent's Specification

"[C]laims are always construed in light of the specification, of which they are a part." Netword LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001). "That claims are interpreted in light of the specification does not mean that everything expressed in the specification must be read into all the claims." SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (quotations omitted). It is improper to import, or "read in" to a claim, a limitation from the specification's general discussion, embodiments, and examples. E.g., Enercon GmbH v. Int'l Trade Comm'n, 151 F.3d 1376, 1384 (Fed. Cir. 1998); Intel Corp. v. United States Int'l Trade Comm'n, 946 F.2d 821, 836 (Fed. Cir. 1991) (holding that "[w]here a specification does not require a limitation, that limitation should not be read from the specification into the claims."); Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988) (finding that "[a]lthough the specification may aid the court in interpreting the meaning of disputed language in the claims, particular embodiments and examples appearing in the specification will not generally be read into the claims.").

Still, "[c]laims are not interpreted in a vacuum." Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987). "[T]he specification is always highly relevant to the claim construction analysis. Usually it is dispositive; it is the single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582. Thus, it is improper to eliminate, ignore, or "read out" a claim limitation in order to extend a patent to subject matter disclosed, but not claimed. See, e.g., Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582-83 (Fed. Cir. 1996).

Claims may not "enlarge what is patented beyond what the inventor has described as the invention." Netword, LLC, 242 F.3d at 1352. For example, when the patent specification describes the invention as including a feature, the claims should be construed to require that feature. See, e.g., Watts v. XL Sys., Inc., 232 F.3d 877, 883 (Fed. Cir. 2000). Similarly, when the specification criticizes or disclaims certain features in the prior art, the claims should not be read to encompass the criticized features. SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001) (finding that the criticism of one type of "lumen" in patent excluded that type from construction of the claim term).

Finally, claims should not be limited to the preferred embodiment. CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1158 (Fed. Cir. 1997); see also Amhil Enter., Ltd. v. Wawa, Inc., 81 F.3d 1554, 1559 (Fed. Cir. 1996) (holding that "[a] preferred embodiment . . . is just that, and the scope of a patentee's claims is not necessarily or automatically limited to the preferred embodiment").

"[T]he distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim can be a difficult one to apply in practice." Phillips, 415 F.3d at 1323. "[T]here is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification." Decisioning.com, Inc. v. Federated Dep't Stores, Inc., 527 F.3d 1300, 1307-08 (Fed. Cir. 2008) (quotation marks omitted). "[A]ttempting to resolve that problem in the context of the particular patent is likely to capture the scope of the actual invention more accurately than either strictly limiting the scope of the claims to the embodiments disclosed in the specification or divorcing the claim language from the specification." Id. at 1308. There is therefore "no magic formula or catechism for conducting claim construction," and the court must "read the specification in light of its purposes in order to determine whether the patentee is setting out specific examples of the invention to accomplish those goals, or whether the patentee instead intends for the claims and the embodiments in the specification to be strictly coextensive." Id. (quotation marks omitted). In walking this "tightrope," Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1373 (Fed. Cir. 2007), the court hews to the question of "how a person of ordinary skill in the art would understand the claim terms." Phillips, 415 F.3d at 1323.

IV. Prosecution History

Prosecution history of a patent with the United States Patent and Trademark Office (USPTO) "limits the interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance." Jonsson v. Stanley Works, 903 F.2d 812, 817 (Fed. Cir. 1990) (quotation marks omitted). The prosecution "history contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims. As such, the record before the Patent and Trademark Office is often of critical significance in determining the meaning of the claims." Vitronics, 90 F.3d at 1582-83. Any statements or actions made in the prosecution history by the patentee characterizing what the claimed invention includes or excludes provide notice to the public as to the scope of the claims and therefore are binding on the construction of the claims. See, e.g., Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 957 (Fed. Cir. 2000) (allowing patentee to erase actions in the prosecution history would be "inimical to the public notice function provided by the prosecution history.").

V. Extrinsic Evidence

Consideration of intrinsic evidence will resolve any claim term ambiguity in most circumstances. See Phillips, 415 F.3d at 1313-14. Where it does not, however, the court may consider certain "extrinsic evidence." See id. at 1317. Expert testimony, for example, may provide helpful background on the technology at issue, explain how an invention works, or establish that a claim term has a particular meaning in the relevant field. See id. at 1319. Dictionaries and treatises may also be helpful in this regard. Id. at 1318. However, precedent counsels against reliance on dictionary definitions at the expense of the specification because such reliance "focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent." Id. at 1321; see also Nystrom v. Trex Co., 424 F.3d 1136, 1145 (Fed. Cir. 2005).

In the end, the court's ultimate goal is to construe the disputed terms in a manner consistent with the way the inventor defined them and a person of ordinary skill in the art would understand them. j2 Global Commc'ns Inc. v. Captaris Inc., No. CV 09-04150 DDP (AJWx), 2011 WL 837923, at *2 (C.D. Cal. Mar. 4, 2011). "The construction that stays true to the claim language and most naturally aligns with the patent's description of the invention will be, in the end, the correct construction." Phillips, 415 F.3d at 1316 (quotation marks omitted).

DISCUSSION

I. Oral Argument Rulings

The following terms were construed for the `877 and `766 patents after the completion of the parties' oral argument.

In addition, the parties had previously agreed that the following terms would be given their plain and ordinary meaning: "providing," "application," "installation application," "information for locating," and "storing the extracted configuration settings and the at least one manipulated configuration settings on a storage device."

II. "Format"

Plaintiff argues that "format" should be construed as "specific arrangement of data." Second Am. Joint Proposed Claim Constr. [135] at 4. Initially, Defendant argued that the term was indefinite and not amenable to construction. Id. However at oral argument, Defendant withdrew its indefiniteness argument. Defendant proposes that the term be construed as "the specific arrangement of data that is distinct from name, location, and value." Id. at 4-5.

The court agrees with the parties that "format" involves the "specific arrangement of data." The specification is replete with references to "format" as data that can be stored in multiple ways. `877 patent, 3:20-28; 4:35-38; 7:18-22; 8:3-8; 13:14-25. The remaining issue is whether "format" needs to be "distinct from name, location, and value."

Plaintiff and Defendant reference various pieces of evidence to support their arguments. Plaintiff points out that the specification discusses "format" in a broad sense, and that it is not distinguished from "name," "location," or "value." Defendant directs the court to the claim language of the `766 patent in which "format" is claimed separately from "name," "location," and "value" and the prosecution history of the `766 patent to support its argument.

Of the independent claims in the `766 patent, only claims 1 and 16 use "format" and "name," "location," and "value" together in the manipulation step. `766 patent, 17:66-18:3 (claim 1); 18:65-19:4 (claim 16). In the `766 patent, claim 1 involves the step of "manipulating at least one of the extracted configuration settings from a location, a name, a value, and a format" and claim 16 provides that "at least one of the extracted configuration settings is manipulated from a source location, a source name, a source value, and a source format[.]" Id. (emphasis added). Unlike the `766 patent, independent claims 1 and 16 of the `877 patent describe transitioning only the "format" of the configuration setting. `877 patent, 17:59-62 (claim 1); 18:65-19:3 (claim 16). There is no mention of transitioning the location, name, or value of the configuration settings in the `877 patent claims.

During the prosecution of the `766 patent, Defendant argues that the inventor distinguished "format" from "name," "location," and "value" to obtain the patent. Def.'s Resp. 5. The USPTO had rejected claim 37 of the patent application (claim 1 of the `766 patent) in light of "Hunter," a prior art reference. Klein Decl. Ex. B (May 1, 2007 Office Action) at 7-8. To overcome the rejection in light of Hunter, the inventor amended claim 37 by adding the underlined language:

Id. at 2. The inventor explained to the USPTO that Hunter did not "teach or suggest manipulating . . . configuration settings." Id. at 14-15. The inventor argued that Hunter's use of "tokens" is not the same as "manipulating the format" of the configuration setting. Klein Decl. Ex. C (Oct. 30, 2007 Request for Continued Examination) at 14. As an example, in Hunter, the location of a configuration setting corresponds to a particular "path" identified by the token. Id. The inventor argued that Hunter's use of tokens "corresponds to mapping a setting from a location on the first computer to a location on the second computer," which does not manipulate "the format of a setting." Id. at 14-15. In light of this last statement, Defendant argues that the inventor distinguished "format" from "location," i.e., that changing the "format" of a setting is different from changing the "location" of the setting. Def.'s Resp. 6. Defendant makes a similar argument that a change in the "name," i.e., the "path," of a configuration setting is not the same as changing the "format." Id. at 5. The inventor had argued to the USPTO that "the path [i.e., `name'] of a setting does not correspond to the setting's format." Klein Decl. Ex. C at 14.

There is no evidence that during the prosecution of the `877 patent, the inventor argued that changing the "format" is not the same as changing the "location" of a configuration setting. In other words, it appears that while "format" was used broadly in the `877 patent claims, "format" was used in a narrower sense in the `766 claims.

In light of the difference in claim language and prosecution histories in the `877 and `766 patents and the prosecution history of the `766 patent, the court declines to impose the limitation that the data is "distinct from name, location, and value." Therefore, "format" is construed to mean "a specific arrangement of data."

CONCLUSION

Based on the foregoing, Plaintiff's motion for order construing claims [138] is granted in part and denied in part. The terms are construed as stated on the record and in this opinion and order. Defendant's motion for order construing claims [136] is denied as moot because the counterclaim for infringement of the `212 patent has been dismissed.

IT IS SO ORDERED.