NOTE: This disposition is nonprecedential 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. HOSTENY, Niro, Haller & Niro, of Chicago, 

Illinois, argued for plaintiff-appellant. With him on the 

brief was DAVID J. MAHALEK. 
IMAGECUBE v. BOEING CO 2

ALLEN E. HOOVER, Fitch, Even, Tabin & Flannery, of 

Chicago, Illinois, argued for defendant-appellee. With 

him on the brief was KENDREW H. COLTON, of Washington, DC. 

__________________________ 

Before LOURIE, LINN, and DYK, Circuit Judges. 

DYK, 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 dependent therefrom, of United States Reissue Patent 

37,875 (“’875 patent”) as to defendant The Boeing Company (“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 Corporation (“MTS”), AeroMet Corporation (“AeroMet”), and 

Boeing, alleging infringement of the ’875 patent. Imagecube asserted that the defendants infringed the patent 

by using the claimed process to manufacture aircraft 

parts for Boeing. The patent claims “a process for producing 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) “containing 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 exposed to a focused beam of radiation “such that components A and B are homogenized,” forming solidified 
3 IMAGECUBE v. BOEING CO

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 components 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 previous layer of the dispersion such that each new 

homogenized region becomes integral with the 

previous homogenized region to form the homogenized, 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 “components 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.
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 homogenization 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-CV7587, 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 noninfringement, 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, 
5 IMAGECUBE v. BOEING CO

ageCube’s counsel argued that discovery was required 

with respect to (1) AeroMet’s alleged use of mixed elemental 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. 
IMAGECUBE v. BOEING CO 6

AeroMet and MTS remain pending in the district court. 

ImageCube appealed this judgment, and we have jurisdiction under 28 U.S.C. § 1295(a)(1). 

DISCUSSION

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 Patent, 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 selected “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 specification 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. 
7 IMAGECUBE v. BOEING CO

nents with resultant formation of an alloy between the 

components.” Id. col.4 ll.10–13 (emphasis added). Additionally, the specification notes that the homogenized 

material must have “properties, either physical or chemical 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 “components A and B,” as specified in the claims, are merely 

different metallurgical phases of the same alloy is inconsistent 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 language 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 component A and component B . . . . 

’875 Patent, col.11 ll.37–40. This quote, however, demonstrates no such thing. The specification notes that “homogenization 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 component 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 
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, ImageCube filed a motion for entry of judgment under Rule 

54(b), stipulating that, “given the present claim construction, [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.