Litigation

Untitled case

consolidated MDL

3:18-md-02874

Patents at issue (1)

8760704

Summary

California MDL proceeding coordinating RAH patent litigation. The Dalim case was transferred and consolidated into this MDL. The '704 patent was among the asserted RAH patents in the related coordinated litigation.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

Case overview — In re RAH Color Technologies LLC Patent Litigation, No. 3:18-md-02874-SI (N.D. Cal.)

The parties. The MDL is the consolidated vehicle for a licensing campaign by RAH Color Technologies LLC, a small, inventor-owned patent-holding company formed in 2005 as "a vehicle for an on-going licensing program" for the color-science inventions of Dr. Richard A. Holub (Ph.D. in neurophysiology; former Chief Color Scientist at SuperMac, and alum of Eikonix/Kodak and Agfa-Bayer, with long service in TAGA and RIT teaching). RAH does not appear to make or sell products; it is best characterized as an inventor-founded assertion entity rather than a mass-aggregator PAE — Stanford's NPE database tags the litigation with "individual-inventor-started" and "product company" asserter categories. The MDL's counterparties were the core of the graphic-arts color pipeline: Adobe Inc. (N.D. Cal. No. 3:18-cv-03277), Electronics For Imaging (EFI), Heidelberger Druckmaschinen AG, Eastman Kodak Co., and

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this. Let me start with the MDL and patent identifiers.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll start by pinning down the MDL and its docket, then look for appearances of plaintiff's counsel.

Confirmed the MDL. Now let me pull the docket/attorney lists and verify the plaintiff-side firms.

Let me pull the actual docket entries and check for any local counsel or additional appearances.

Counsel of Record for the Plaintiff — In re RAH Color Technologies LLC Patent Litigation, No. 3:18-md-02874-SI (N.D. Cal.)

Framing note: The MDL is captioned In re: RAH Color Technologies LLC Patent Litigation, MDL No. 2874, assigned to Judge Susan Illston (N.D. Cal., San Francisco). The plaintiff/patent-owner is RAH Color Technologies LLC (Alexandria, Va.), managed by Dr. Richard A. Holub. The MDL coordinates RAH's infringement actions against Adobe, Xerox, Heidelberger, Dalim, Kodak, and X-Rite, plus Electronics For Imaging's declaratory-judgment action in which EFI is nominally the plaintiff. The '704 patent (U.S. 8,760,704, "System for Distributing and Controlling Color Reproduction at Multiple Sites") is one of the RAH patents-in-suit in the MDL, including in the Dalim action (No. 3:19-cv-00518-SI). The MDL was closed by stipulated dismissal in September 2021 (Dkt. 154, 155).

The plaintiff side was represented throughout by a single firm — Global IP Law Group, LLC, Chicago — with no separate N.D. Cal. local-counsel firm appearing in the record I located. All three attorneys below are confirmed from the April 4, 2019 MDL case management conference transcript (Ex. 1038 in IPR2019-00646, which lists appearances "For Plaintiff RAH Color Technologies: GLOBAL IP LAW GROUP … DAVID BERTEN, ESQ., ALISON AUBRY RICHARDS, ESQ., IRWIN PARK, PH.D., ESQ."), the Jan. 7, 2019 Joint Preliminary Status Report signature block, PTAB mandatory notices, and the April 30, 2021 minute entry (Dkt. 153) naming "Plaintiff Attorney: David Berten, Irwin Park, Alison Richards."

Attorney Role Firm / Office Notes
David P. Berten Lead trial counsel in the MDL and in RAH's infringement suits (self-identified as "lead counsel for RAH Color Technologies LLC in six related matters" in his PTAB declaration; backup counsel in the IPRs) Global IP Law Group, LLC, 55 W. Monroe St., Suite 3400, Chicago, IL 60603 · dberten@giplg.com · (312) 241-1502 Career patent monetization/enforcement litigator; argued the MDL case management conferences, filed the September 27, 2021 stipulation of dismissal (Dkt. 154), and the April 23, 2021 joint status report (Dkt. 152). Illinois Bar No. 6200898; member of the N.D. Cal. Bar; admitted pro hac vice in the RAH IPRs.
Irwin Park, Ph.D. Lead PTAB counsel / core litigation team — designated "Lead Counsel for Patent Owner" in RAH's IPR2019-00627/-00628/-00629/-00646 defenses; appeared for RAH at the MDL conferences Global IP Law Group, LLC, Chicago · ipark@giplg.com · (312) 241-1518 · USPTO Reg. No. 68,865 Patent attorney with a doctorate; handled the parallel PTAB defense of the '008, '444, '761 and related RAH patents against Adobe's IPR petitions — the validity track running alongside the MDL.
Alison Aubry Richards Core litigation team / of counsel-level partner — appeared for RAH at the MDL conferences and signed RAH's MDL submissions; not listed as PTAB lead Global IP Law Group, LLC, Chicago · arichards@giplg.com · (312) 241-1505 Harvard Law; former partner at Fitch Even Tabin & Flannery and attorney at Kirkland & Ellis; Illinois Bar No. 6285669; repeatedly named to IAM Strategy 300 and Super Lawyers; argued before the Federal Circuit; N.D. Cal. pro hac vice record (e.g., Ironworks Patents); lead counsel docket activity in other GIPLG patent cases (NuCurrent v. UGREEN, E.D. Tex.).

Caveats and sourcing gaps

  • Local counsel: I found no N.D. Cal. local counsel of record for RAH in the MDL. Global IP Law Group attorneys were admitted pro hac vice in the Northern District (Richards' pro hac vice application in the Ironworks Patents N.D. Cal. case is a related-firm example, and Berten's Jan. 2019 signature block expressly notes he is a "Member of the N.D. Ca. Bar"), but I could not retrieve a docket entry listing a separate local firm, and I do not want to infer one.
  • Other Global IP attorneys may have appeared on individual member-case dockets (e.g., Nicholas Dudziak appears alongside Berten and Park in RAH's earlier Ricoh litigation, and Pepper Hamilton's Charles S. Marion and Megan M. Kearney represented RAH in the E.D. Pa. Ricoh case). Those were not MDL appearances as far as the sources I could reach show, so I have not listed them as counsel of record here.
  • In-house: Dr. Richard A. Holub is RAH's manager and sole principal and the named inventor, but I found no indication he is admitted counsel or entered an appearance; treat him as the client representative, not counsel.
  • Docket granularity: I was unable to directly open the PACER/CourtListener docket sheet for 3:18-md-02874 in this session (search results, PTAB exhibits, the UniCourt docket summary, and the Justia/opinion PDFs served as substitutes). The UniCourt summary for 3:18-md-02874 lists the plaintiff-side attorney as David Powers Berten, with a 12/18/2018 Notice of Appearance (Dkt. 4), and confirms the three-attorney plaintiff team in the Dkt. 153 minute entry — but I could not verify every pro hac vice order individually. If exact docket citations for each PHV order matter, the docket sheet should be pulled directly.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the docket and counsel appearances in this MDL.

Scope and caption check first

The MDL number in the metadata resolves to In re: RAH Color Technologies LLC Patent Litigation, No. 18‑md‑02874‑SI (N.D. Cal.), MDL No. 2874, before the Hon. Susan Illston (the JPML order and Pretrial Order No. 1 both use "18‑md‑02874‑SI"; the "SI" suffix is the judge's initials). The member case discussed in the existing summary — the Dalim case — is RAH Color Technologies LLC v. Dalim Software GmbH, No. 3:19‑cv‑00518‑SI (N.D. Cal.), transferred in from N.D. Ill. No. 1:19‑cv‑00275 (filed Jan. 14, 2019), and closed Sept. 27, 2021 (RPX Insight case page; Justia docket, N.D. Ill.).

So the operative defendant for this analysis is Dalim Software GmbH (the German workflow/color‑management software maker whose ES and Twist products were accused). The '704 patent (U.S. Pat. No. 8,760,704, "System for Distributing and Controlling Color Reproduction at Multiple Sites," issued June 24, 2014) was one of the nine RAH patents coordinated in the MDL and was squarely in play against EFI and the other counterparties (claims 11 and 29); note, however, that the Dalim complaint I could review pleads counts on the '870, '897 and '008 patents, and I could not verify from a public source which Dalim count (if any) ultimately rested on the '704 — RAH's infringement contentions served April 18, 2019 would be the controlling document and are not publicly posted.

Defense counsel of record for Dalim Software GmbH

Dalim's defense was handled entirely out of Perkins Coie LLP, the same firm that represented co‑defendant Adobe Inc. in the MDL and in the parallel PTAB campaign.

Attorney Role Firm / Office Notes
James F. Valentine Lead counsel for Dalim; also court‑appointed liaison counsel for all counterparties in MDL 2874 Perkins Coie LLP, 3150 Porter Drive, Palo Alto, CA Registered patent attorney (USPTO Reg. No. 39,053). Appeared for "Adobe and Dalim Software GmbH" at the April 4, 2019 initial CMC; Pretrial Order No. 2 appointed him "liaison counsel for the counterparties on administrative matters." Was a named backup counsel for Adobe in the RAH IPRs (e.g., IPR2019‑00646).
Wing H. Liang Of counsel / core trial team (appeared at the CMC for Dalim and Adobe) Perkins Coie LLP, Palo Alto, CA Patent litigator; admitted pro hac vice in the Adobe/Dalim PTAB proceedings against RAH's patents (IPR2019‑00628, ‑00646); handled fact‑witness coordination (e.g., British Library testimony) in the MDL.
Christopher G. Hanewicz Of counsel (partner) Perkins Coie LLP, 33 East Main Street, Suite 201, Madison, WI Listed as Dalim/Adobe defense counsel on the docket; USPTO pro hac vice in the RAH IPRs; § 337 and district‑court patent litigator (e.g., Easton Baseball/Softball v. Wilson Sporting Goods, C.D. Cal.). Appears as the day‑to‑day contact with RAH's counsel in MDL correspondence.
Andrew N. Klein Of counsel / associate‑level patent litigator Perkins Coie LLP, Palo Alto, CA Listed on the Dalim docket as a defense attorney; pro hac vice in Adobe's RAH IPRs.
Christopher L. Kelley Senior Perkins Coie patent partner who led the parallel IPR campaign for Adobe (Reg. No. 42,714), Palo Alto Perkins Coie LLP, Palo Alto, CA Led Adobe's inter partes reviews of RAH's '444 and related patents (final written decision Aug. 31, 2020). Caution: I have not confirmed a district‑court appearance by Kelley for Dalim; he is properly described as the co‑defendant group's PTAB lead, not verified Dalim counsel of record.

In‑house: No Dalim in‑house counsel appears in any public filing I found. Dr. Carol Werle, Dalim's CEO (carol.w@dalim.com), is copied on MDL service correspondence and is the addressee of RAH's 2016 pre‑suit letters, but she is a party executive, not counsel of record — do not list her as in‑house counsel.

Sourcing for the appearances

  • April 4, 2019 CMC transcript (San Francisco), quoted in full in IPR2019‑00646, Ex. 1038: "For Defendants Adobe and Dalim Software GmbH: PERKINS COIE LLP, 3150 Porter Drive, Palo Alto, California 94304, BY: JAMES F. VALENTINE, ESQ., WING H. LIANG, ESQ." — docketalarm exhibit.
  • Pretrial Order No. 2 (Apr. 8, 2019), reproduced as IPR2019‑00646 Ex. 2005: Dalim ordered to answer by Apr. 18, 2019; "The Court appoints James Valentine, counsel for Adobe and Dalim, as liaison counsel for the counterparties on administrative matters." — exhibit.
  • Docket‑derived counsel list for RAH v. Dalim: "Defendant Attorney: James Valentine, Christopher Hanewicz, Andrew Klein" — Patexia.
  • March 4, 2019 defense‑group email (IPR2019‑00646 Ex. 2008) confirming the Perkins Coie Dalim/Adobe team (Valentine, Liang, Hanewicz, Klein) coordinating with co‑defendants' counsel — exhibit.
  • PTAB mandatory notices listing Perkins Coie Palo Alto/Madison addresses and pro hac vice admissions of Hanewicz, Liang and Klein (granted May 23, 2019) — Adobe updated mandatory notice, IPR2019‑00646.

Context: other defendants in the MDL (if "defendant(s)" is read MDL‑wide)

The MDL coordinated RAH's suits against a set of color‑imaging/print defendants, and each had separate counsel. From the April 2019 defense‑group correspondence and the MDL filings, the other defense firms were:

  • Adobe Inc. — Perkins Coie LLP (Valentine,