Imagecube LLC v. the Boeing Company

NOTE: This disposition is nonprecedential
United States Court of Appeals
for the Federal Circuit
__________________________
IMAGECUBE LLC,
Plaintiff-Appellant,
v.
THE BOEING COMPANY,
Defendant-Appellee,
and
MTS SYSTEMS CORPORATION AND
AEROMET CORPORATION,
Defendants.
__________________________
2010-1265
__________________________
Appeal from the United States District Court for the
Northern District of Illinois in case no. 04-CV-7587, Judge
Robert M. Dow, Jr.
___________________________
Decided: June 20, 2011
___________________________
JOSEPH N. H OSTENY, Niro, Haller & Niro, of Chicago,
Illinois, argued for plaintiff-appellant. With him on the
brief was DAVID J. M AHALEK .

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IMAGECUBE v. BOEING CO 2
ALLEN E. H OOVER, Fitch, Even, Tabin & Flannery, of
Chicago, Illinois, argued for defendant-appellee. With
him on the brief was KENDREW H. COLTON , of Washing-
ton, DC.
__________________________
Before LOURIE, LINN , and DYK , Circuit Judges.
D YK , Circuit Judge.
ImageCube LLC (“ImageCube”) appeals a decision of
the United States District Court for the Northern District
of Illinois granting judgment of noninfringement with
respect to claims 1, 25, 32, and 34, and the claims de-
pendent therefrom, of United States Reissue Patent
37,875 (“’875 patent”) as to defendant The Boeing Com-
pany (“Boeing”). ImageCube LLC v. Boeing Co., No. 04-
CV-7587, 2009 WL 2178831 (N.D. Ill. July 22, 2009)
[hereinafter Summary Judgment Decision]. We affirm.
BACKGROUND
ImageCube filed suit against MTS Systems Corpora-
tion (“MTS”), AeroMet Corporation (“AeroMet”), and
Boeing, alleging infringement of the ’875 patent. Im-
agecube asserted that the defendants infringed the patent
by using the claimed process to manufacture aircraft
parts for Boeing. The patent claims “a process for produc-
ing three-dimensional integral objects” by exposing the
components to radiation. ’875 Patent, col.2 ll.9–12. The
process begins with a dispersion (i.e., a mixture) “contain-
ing components A and B.” ’875 Patent, col.16 ll.62–63. A
thin layer of the dispersion is spread across the surface of
a piston, and specific portions of the dispersion are ex-
posed to a focused beam of radiation “such that compo-
nents A and B are homogenized,” forming solidified

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IMAGECUBE v. BOEING CO 3
regions where the radiation was applied. ’875 Patent,
col.7 ll.17–24. The piston then moves down to permit
another layer of the dispersion to be spread across the
surface and the process is repeated, layer-by-layer, until a
solid, three-dimensional part is formed. At the end of the
process, the solidified part can be separated from the
surrounding dispersion, which has not been homogenized.
Claim 1 is representative:
A process for producing a homogenized,
three-dimensional, integral object by imagewise
thermal radiation of a dispersion, the dispersion
containing components A and B, comprising the
steps of:
a) providing the dispersion containing com-
ponents A and B;
b) forming the dispersion into a layer;
c) homogenizing the dispersion by applying
imagewise thermal radiation to form an alloy of
components A and B; and
d) repeating steps a)–c) by applying each
successive layer of the dispersion onto the previ-
ous layer of the dispersion such that each new
homogenized region becomes integral with the
previous homogenized region to form the homoge-
nized, three-dimensional, integral object.
’875 Patent, col.16 l.58–col.17 l.5. Claims 25, 32, and 34
similarly require “homegenizing” a mixture of “compo-
nents A and B.”1 See id. col. 18 ll.20–33, col.18 ll.51–67,
1 Claim 51 is the only asserted claim that does not
contain the term “homogenizing.” See ’875 Patent, col.20
ll.22–36. Imagecube has apparently abandoned any
efforts to recover for alleged infringement of this claim.

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IMAGECUBE v. BOEING CO 4
col.19 ll.1–16. The district court construed the term
“homogenizing” to require “the formation of an alloy
between substances, and in the case of the homogeniza-
tion of metals and ceramics requiring the intimate mixing
of at least two components to form an alloy between the
components.” ImageCube LLC v. Boeing Co., No. 04-CV-
7587, slip op. at 7 (N.D. Ill. Apr. 26, 2006) [hereinafter
Claim Construction Opinion] (emphasis added).
Based on this claim construction, AeroMet and MTS
filed a motion for partial summary judgment of nonin-
fringement, arguing that, to the extent that AeroMet’s
process “began with a single metal alloy in powdered form
[i.e., a single powdered alloy], and finished with a metal
part made exclusively of the same alloy,” it used only a
single component. J.A. 1245. AeroMet asserted that its
process, as to single powdered alloys, did not involve the
homogenization of at least two components to form an
alloy between the components. The summary judgment
motion sought a determination of noninfringement only
as to single powdered alloys. In response to AeroMet’s
motion, ImageCube submitted the declaration of John A.
Lawton, in which Lawton asserted that the alloy utilized
by AeroMet contained distinct metallurgical “phases,”
each of which has a different crystalline structure. J.A.
1526–27. Lawton claimed that these “phases” were
essentially individual components as required by the
claims. J.A. 1529.
With its response to AeroMet’s motion for partial
summary judgment, ImageCube also filed a motion for
discovery pursuant to Federal Rule of Civil Procedure
56(f).2 At a hearing on the Rule 56(f) motion, Im-
2 Rule 56 was amended recently, and the applicable
language was moved to Rule 56(d). Fed. R. Civ. P. 56,

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IMAGECUBE v. BOEING CO 5
ageCube’s counsel argued that discovery was required
with respect to (1) AeroMet’s alleged use of mixed elemen-
tal powders, and (2) the district court’s claim construction.
The district court found no need for discovery. First, the
court noted that the motion for summary judgment was
confined to the use of single powdered alloys; thus,
AeroMet’s alleged use of mixed elemental powders was
not at issue. Second, the court characterized the question
of whether a single powdered alloy falls within the scope
of the patent as a question of claim construction, the
resolution of which would not be helped by discovery.
After disposing of the Rule 56(f) motion, the district
court granted AeroMet’s motion for partial summary
judgment, concluding that “products made with single
powdered alloy are beyond the scope of [the] patent
claims.” Summary Judgment Decision, at *19. The court
held that a “component” must be:
a discrete polymer, metal, ceramic or combination
of those materials; in liquid, solid, or particulate
form; that differs in some chemical or physical
property from the other component(s) present in
the dispersion; is capable of forming an alloy upon
exposure to radiation; and is not already alloyed
with the other component(s).
Id. at *13. The court held that, under this construction,
metallurgical phases of a single powdered alloy “fail to
qualify as ‘components’ under the ’875 patent.” Id. at *17.
Following partial summary judgment, at ImageCube’s
request, a Rule 54(b) judgment was entered dismissing all
claims against Boeing with prejudice. Claims against
Advisory Committee Notes to 2010 Amendments. In
order to maintain consistency with the parties’ briefs and
the district court record, we will continue to refer to Rule
56(f) before the amendment.

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IMAGECUBE v. BOEING CO 6
AeroMet and MTS remain pending in the district court.
ImageCube appealed this judgment, and we have jurisdic-
tion under 28 U.S.C. § 1295(a)(1).
D ISCUSSION
ImageCube primarily objects to the district court’s
construction of the term “components,” which the court
construed to exclude metallurgical phases of a single
alloy.3 We review the district court’s claim construction
without deference. Cybor Corp. v. FAS Techs., Inc., 138
F.3d 1448, 1451 (Fed. Cir. 1998) (en banc). ImageCube
argues that the ’875 patent specifically recognizes that
metallurgical phases of the same alloy can be components.
We disagree. The claims require “homogenizing . . . to
form an alloy of components A and B,” see e.g., ’875 Pat-
ent, col.16 ll.65–67, and the specification discusses “alloy
formation upon . . . exposure to radiation,” id. col.5 ll.8–9;
see also id. col.3 ll.19–21. The components must be se-
lected “so as to be capable of alloying under the exposure
of imagewise radiation,” thus suggesting that they must
alloy during the process. Id. col.3 ll.19–21. The specifica-
tion explains that “‘homogenization’ for purposes of the
invention requires intimate mixing of at least two compo-
3 ImageCube also argues that the district court’s
construction of the term “homogenizing” is incomplete
because it fails to make clear that complete mixing is not
required. To support this argument, ImageCube points to
the patent’s specification, which states that, in forming
the alloy, “homogenization does not require complete
mixing.” ’875 Patent, col.4 ll.30–31. We fail to see how
this proposed revision affects the propriety of partial
summary judgment. In any event, we find ImageCube’s
proposed clarification inherent in the district court’s
construction, which requires “intimate mixing.” Claim
Constructrion Opinion, at 7. As a result, we conclude that
there was no error in the construction.

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IMAGECUBE v. BOEING CO 7
nents with resultant formation of an alloy between the
components.” Id. col.4 ll.10–13 (emphasis added). Addi-
tionally, the specification notes that the homogenized
material must have “properties, either physical or chemi-
cal or both, which are different from the properties of the
individual components.” Id. col.2 ll.63–65.
Both the claims and the specification make clear that
homogenization must result in the formation of an alloy
between components A and B. The notion that “compo-
nents A and B,” as specified in the claims, are merely
different metallurgical phases of the same alloy is incon-
sistent with this requirement. An alloy between the
components is not formed through homogenization where
the process begins and ends with the very same alloy.
Additionally, not one of the embodiments discussed in the
patent discloses the use of the same alloy for components
A and B.4 Thus, we hold that the district court correctly
4 ImageCube relies primarily on the following lan-
guage from the patent to argue that metallurgical phases
of an alloy can be components:
[T]he liquid phase need not be comprised of a pure
component B or a pure component A. The liquid phase
may be comprised of, for example, an alloy of compo-
nent A and component B . . . .
’875 Patent, col.11 ll.37–40. This quote, however, demon-
strates no such thing. The specification notes that “ho-
mogenization is usually greatly enhanced when at least
one of the components is in the liquid state.” Id. col.11
ll.26–27. In this embodiment, solid particles of one com-
ponent will be suspended in the liquid phase of the other
component to form the dispersion. In the portion of the
specification quoted above, it is noted that the liquid
portion of the dispersion need not be comprised of pure
component A or B, but may be comprised of a liquid alloy
of the two components. This does not, however, negate

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IMAGECUBE v. BOEING CO 8
construed the term “components” to exclude metallurgical
phases of a single alloy.
To the extent ImageCube attempts to raise issues
other than claim construction, we find that these issues
have been waived. Following summary judgment, Im-
ageCube filed a motion for entry of judgment under Rule
54(b), stipulating that, “given the present claim construc-
tion, [ImageCube cannot] prove infringement by Boeing;”
thus, “[t]his case is final with respect to Boeing.” J.A.
3298. In so stipulating, ImageCube waived issues other
than claim construction with respect to Boeing. In any
event, we find ImageCube’s arguments relating to these
issues to be without merit.
AFFIRMED
the requirement that there be two distinct materials
rather than metallurgical phases of the same material.

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