The opinion of the court was delivered by: Judge Joan B. Gottschall
MEMORANDUM OPINION & ORDER
Plaintiff Intellect Wireless, Inc. ("Intellect") brought this patent infringement action against defendants United States Cellular Corp. ("U.S. Cellular") and T-Mobile USA, Inc. ("T-Mobile") (collectively, "defendants")*fn1 , alleging infringement of certain patents relating to the sending, transmission, and receipt of messages between wireless devices such as cellular telephones. This matter is presently before the court on defendants' motion for summary judgment.
Defendants are each in the business of offering wireless communications services. (Defendants' Statement of Undisputed Material Facts in Support of Their Motion for Summary Judgment ("Defs.' Stmt.") ¶ 2.) Intellect is a Texas-based corporation that specializes in commercializing inventions relating to wireless image messaging. (Id. ¶ 1.) Among those inventions are U.S. Patent numbers 7,257,210 (the "'210 patent"), 7,266,186 (the "'186 patent"), and 7,305,076 (the "'076 patent") (collectively, the "patents-in-suit"), all of which are at issue in the instant motion.*fn2 (Id. ¶ 6.) Each of the patents-in-suit concerns the method of sending and transmitting picture and video messages between wireless devices. Each of the patents-in-suit includes method claims that refer to, inter alia, a "message originator" and a "message center." Some of the claims also refer to a "message recipient."
For example, claim 1 of the '210 patent, cited by defendants as illustrative of all of the claims at issue, states:
A method of communicating information from a message originator to a message recipient having a wireless portable communication device, comprising the steps of: initiating a message from a message originator to a message recipient under the control of the message originator as to when the message is sent to a message center, the message center being coupled to a communications network; receiving at the message center both message originator information provided automatically by the communications network as the caller ID identifying the telephone number of the message originator, and a non-facsimile picture obtained from the message originator prior to transmitting the caller ID to a wireless portable communication device; and, causing the communications network to wirelessly transmit the caller ID and the picture from the message center to the wireless portable communication device. (Id. ¶ 15 (emphasis added).) The other claims at issue also use these terms. (See id. ¶ 17 (quoting claim 18 of the '186 patent, which uses the terms "message originator," "message recipient," and "message center"); id. ¶¶ 19, 20, 21, 22 (quoting claims 1, 6, 12, and 19, respectively, of the '076 patent, each of which uses all three identified terms).)
Summary judgment is warranted "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c)(2); Perfect Web Techs. Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1327 (Fed. Cir. 2009). Summary judgment is proper only when, "drawing all reasonable factual inferences in favor of the non-movant, the evidence is such that the non-movant cannot prevail." Optium Corp. v. Emcore Corp., 603 F.3d 1313, 1319 (Fed. Cir. 2010).
Defendants argue that they cannot be liable for direct infringement because the subject patents, which require a "message originator," a "message center," and a "message recipient," cannot be infringed by a single actor. Intellect insists that defendants' motion is premature and, in any case, that the subject claims are susceptible to infringement by a single actor. The court examines each of Intellect's arguments in turn.
A.Whether Summary Judgment is Premature
Intellect argues that summary judgment is premature first because it needs more discovery, specifically "depositions concerning issues such as the manner in which messages are initiated so as to be processed by Defendants' message centers." (Doc. 137 at 5.) However, Intellect plainly has failed to comply with the required procedure to assert its need for additional discovery as a basis for opposing summary judgment. Federal Rule of Civil Procedure 56(f) provides that a court may deny a motion for summary judgment in a case in which "a party opposing the motion shows by affidavit that, for specified reasons, it cannot present facts essential to justify its opposition . . . ." Fed. R. Civ. P. 56(f). The Seventh Circuit has noted that a party's failure to file a Rule 56(f) affidavit warrants disregarding its asserted need for additional discovery. Chambers v. Am. Trans Air, Inc., 17 F.3d 998, 1002 (7th Cir. 1994). Intellect's counsel was reminded of this requirement at a hearing in which the court denied Intellect's motion to defer ruling on summary judgment until after claim construction occurred. (Doc. 145-2 at 3:11 through 4:2, 5:5-10; Doc. 135.) Without an affidavit that, consistent with Rule 56(f), sets out specific disputed factual issues on which Intellect needs specified additional discovery, the court declines to credit Intellect's contention that it needs discovery regarding the manner in which messages are initiated.
2. Multiple Summary Judgment Motions
Intellect also argues that defendants' motion is premature because Intellect amended its complaint to include the '532 patent, not at issue in the instant motion. (See note 2 supra.) According to Intellect, the instant motion wastes judicial resources because the court cannot resolve all of the claims by resolving the instant motion. (Doc. 137 at 6.) This argument lacks merit for two reasons. First, Intellect sought and was granted leave to file its amended complaint only after defendants filed their motion for summary judgment. (Compare Doc. 118 (motion for summary judgment filed Feb. 8, 2010) with Doc. 126 (motion for leave to file amended complaint, filed Feb. 10, 2010).) While the court casts no aspersion on Intellect's motivation in seeking amendment or the merits of its new allegations, a rule that summary judgment motions are premature by virtue of later-added allegations to an amended complaint would allow plaintiffs to forestall rulings on timely and possibly meritorious motions for summary ...