Litigation

Electronics for Imaging, Inc. v. RAH Color Technologies LLC

dismissed

1:18-cv-01436

Patents at issue (1)

7729008

Summary

Electronics for Imaging, Inc. filed a declaratory-judgment action against RAH Color Technologies LLC; the case was part of the RAH Color MDL, transferred to N.D. Cal. as 3:18-cv-07465-SI, and dismissed. U.S. Patent 7,729,008 was among the patents at issue.

Case overview & background

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

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Overview

The parties. Plaintiff/declaratory-judgment plaintiff Electronics For Imaging, Inc. (EFI) is an operating company — a manufacturer of digital front ends (the "Fiery" print servers), industrial inkjet presses, and color-management software for commercial and packaging printing, headquartered in Fremont, California and represented here by Jeffer Mangels Butler & Mitchell LLP (Gregory S. Cordrey, Joseph J. Mellema, Irvine, CA). Defendant RAH Color Technologies LLC is a Virginia LLC with an Alexandria, Virginia office, wholly owned and managed by Dr. Richard A. Holub ("R-A-H"), the named inventor on the portfolio (roughly 27–36 issued patents across its complaints). RAH is, functionally, a licensing entity rather than an operating company: its own complaints state that Dr. Holub's 1998 start-up, Imagicolor Corporation, failed to raise investment and was dissolved, and that "in 2005, RAH Color Technologies LLC was formed as a vehicle for an on-going licensing program." It reported ~27 licensees, with an average license value "less than $1 million," and told the MDL court it was pursuing damages consistent with that history. Its counsel was Global IP Law Group (David Berten, Alison Aubrey Richards, Irwin Park, Chicago).

The accused technology and patents. RAH's campaign targeted vendors and users of ICC-profile-based color management workflows in printing. In RAH's infringement contentions against Xerox, the claim charts for the '870 and '008 patents referenced EFI or EFI product literature "69 times in 35 pages" to map claim limitations onto "the accused EFI print servers and software" — i.e., EFI's Fiery digital front ends and associated color-management software, which RAH reached indirectly by suing EFI's OEM and end-user customers (Ricoh Americas, Sept. 17, 2015; Quad/Graphics, June 30, 2017; Xerox, Sept. 20, 2017). EFI's original complaint (Mar. 14, 2018) sought declarations of non-infringement on four patents — the '870 (6,995,870), '008 (7,729,008), '897 (7,312,897), and '704 (8,760,704) — and the operative second amended complaint (Apr. 11, 2019) dropped the '897 and added the '444 (8,416,444)

Key legal developments & outcome

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

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Now let me get the key MDL rulings and the final disposition.

EFI v. RAH Color Technologies — Legal Developments & Disposition

Bottom line: This was never an infringement trial. It was a supplier-side declaratory-judgment action that EFI filed defensively after RAH sued EFI's customers. It was bounced between three forums on jurisdictional and MDL grounds, survived one round of dismissal on the merits, and was ultimately dismissed in the MDL without any claim construction, summary judgment, trial, or Federal Circuit appeal. Its real significance is as a chapter in MDL No. 2874 and as a modest contribution to the Microsoft v. DataTern line of supplier/DJ-jurisdiction law.

Chronology

Date Event
2018-03-14 EFI files DJ complaint, N.D. Cal., No. 3:18-cv-01612-WHO (Judge William H. Orrick), seeking declarations of non-infringement of the '870, '008, '897 and '704 patents. Anticipatory filing — RAH had never contacted EFI directly.
2018-04-23 RAH files corporate disclosure statement.
~2018-04 RAH moves to dismiss under Rule 12(b)(1), (2), (3) (lack of subject-matter and personal jurisdiction, improper venue, failure to state a claim).
2018-05-07 EFI files First Amended Complaint (Dkt. 18); notices the original motion as moot.
2018-05-21 RAH moves to dismiss the FAC (Dkt. 21), with Holub and Park declarations.
2018-06-01 Joint discovery letter brief on EFI's request for jurisdictional discovery (4 interrogatories, 7 RFPs) (Dkt. 23).
2018-06-04 Judge Orrick denies jurisdictional discovery (Dkt. 25), holding EFI failed to show RAH's jurisdictional proffers were inadequate.
2018-10-24 Order granting RAH's 12(b)(2) motion — no personal jurisdiction in N.D. Cal. Reasoning: RAH's California enforcement contacts (three cease-and-desist letters to California companies, six in-person meetings, one San Francisco meeting with Xerox counsel on a Japan stopover) were insufficient for purposeful availment.
2018-11-14 Rather than dismiss outright, Judge Orrick transfers the case to the E.D. Va. (Dkt. 43).
2018-11-21 Case opened as 1:18-cv-01436, assigned Judge T.S. Ellis III (Magistrate Judge Theresa Carroll Buchanan). Same-day scheduling order (Dkt. 45): discovery cutoff 2019-03-22; final pretrial conference 2019-05-02 or 2019-06-27.
2018-12-06 JPML creates MDL No. 2874, In re RAH Color Technologies LLC Patent Litigation, N.D. Cal., before Judge Susan Illston (Dkt. 48).
2018-12-07 / 12-12 Case transferred out of E.D. Va.; opened in N.D. Cal. as 3:18-cv-07465-SI. Total E.D. Va. lifespan: ~16 days, zero substantive motions.
2018-12-14 Pretrial Order No. 1; initial status conference set for 2019-01-15.
2019-02-01 Adobe files IPR petitions against RAH's patents, incl. IPR2019-00627 on the '008 patent.
2019-02-22 RAH's mandatory notices in IPR2019-00627 identify the EFI case (then still captioned E.D. Va.) as a related litigation.
2019-04-04 MDL case management conference; Pretrial Order No. 2 sets SAC deadline.
2019-04-11 EFI files Second Amended Complaint (Dkt. 63): DJ of non-infringement of '870, '008, '444, **'

Plaintiff representatives

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

I'll research the docket and counsel appearances for this case.

I have the core appearances. Now let me confirm the full roster and verify each attorney's firm, role, and experience.

Let me verify the docket-level appearances in the N.D. Cal. member case and the original filing, plus check for any additional counsel (in-house, local, or IPR counsel).

Counsel of Record for Plaintiff Electronics for Imaging, Inc. ("EFI")

Procedural note that matters for identifying "counsel of record": Case No. 1:18-cv-01436 was not an original E.D. Va. filing. EFI filed its declaratory-judgment action in N.D. Cal. as No. 3:18-cv-01612; Judge William H. Orrick ordered transfer to E.D. Va. on Nov. 14, 2018 (Dkt. 43), the case was docketed in Alexandria on Nov. 21, 2018 as 1:18-cv-01436 before Judge T.S. Ellis III, and it was then pulled into the RAH MDL and reopened in N.D. Cal. on Dec. 12, 2018 as No. 3:18-cv-07465-SI (MDL No. 3:18-md-02874-SI, Judge Susan Illston). All attorney appearances therefore originated on the N.D. Cal. dockets and carried over into the E.D. Va. docket sheet.

Attorney Role Firm / Office Contact on docket Relevant patent litigation experience
Gregory S. ("Greg") Cordrey Lead counsel — signed the complaint, the DJ jurisdictional allegations, the response to RAH's 12(b) motion, and the SAC; appeared for EFI at the April 4, 2019 MDL case management conference before Judge Illston Jeffer Mangels Butler & Mitchell LLP ("JMBM"), 3 Park Plaza, Suite 1100, Irvine, CA 92614 gcordrey@jmbm.com; (949) 623-7236 JMBM partner; registered patent attorney (USPTO Reg. No. 44,089); B.S. aerospace engineering, USC J.D. 1997; defended Chimei Innolux, Acer America, ViewSonic and Vizio in Semiconductor Energy Lab. v. Chimei Innolux (C.D. Cal. SACV12-0021) and filed the parallel IPR petitions (e.g., IPR2013-00028/00038); repeatedly listed in Best Lawyers for Patent Litigation and named Orange County "Lawyer of the Year" for patent litigation
Joseph J. Mellema Of counsel / second chair — entered a Notice of Appearance on May 15, 2018 (Dkt. 20 in the N.D. Cal. predecessor case), which carried onto the E.D. Va. docket; listed as an EFI attorney of record Jeffer Mangels Butler & Mitchell LLP, Orange County (Irvine) office, 3 Park Plaza, Suite 1100, Irvine, CA 92614 jmellema@jmbm.com; (949) 623-7232 Joined JMBM in 2016 as of counsel in the Patent Litigation Group and was promoted to partner effective Jan. 1, 2020; dual B.S. degrees in electrical engineering and physical sciences and former Raytheon systems engineer (F/A-18 sensors); experience in Hatch-Waxman/ANDA pharmaceutical litigation and trademark/trade-secret enforcement

Points of confirmation and qualification

  • Docket evidence for the two names. The UniCourt PACER-derived party table for 1:18-cv-01436 lists exactly two plaintiff attorneys — "Gregory Stuart Cordrey" and "Joseph James Mellema" — and the Justia docket mirror shows Cordrey as the efiler on every EFI submission (e.g., Dkt. 15, 19, 22, 23, 41) and Mellema's appearance at Dkt. 20. The April 4, 2019 MDL CMC transcript records only "JEFFER MANGELS BUTLER & MITCHELL, LLP … BY: GREGORY S. CORDREY, ESQ." as appearing for EFI.
  • No Virginia local counsel appears on the docket. The case sat in E.D. Va. for roughly two weeks (Nov. 21 – Dec. 6, 2018) and the mirrored docket shows no appearance by a Virginia firm for EFI — expected, given the case was transferred out on the JPML conditional transfer order before any E.D. Va. hearing. I could not open the raw PACER docket to rule out a sealed or unlogged appearance, so treat "no local counsel" as an inference from the public docket rather than a certified fact.
  • No in-house EFI attorney appears of record. No EFI corporate/legal-department lawyer filed an appearance in either 1:18-cv-01436 or 3:18-cv-07465 according to the available dockets; I found no named in-house counsel and will not guess at one.
  • Related PTAB/parallel work (context, not district-court record). In the RAH MDL-adjacent IPR proceedings (e.g., IPR2019-00646 on the '761 patent), the petitioners' papers list a JMBM team including Rachel Capoccia (JMBM, Los Angeles) alongside Orrick's Vincent Pearce. Capoccia does not appear as counsel of record in this district court case, so she should not be listed as such.
  • Case outcome for context. Judge Illston granted in part and denied in part RAH's Rule 12(b)(1) motion to dismiss EFI's second amended complaint on June 3, 2019 (Dkt. 54 in MDL 3:18-md-02874; Dkt. 64/71 in 3:18-cv-07465-SI), and the case was ultimately dismissed — consistent with the metadata status.

Bottom line: The only counsel of record for EFI in this matter are Gregory S. Cordrey (lead) and Joseph J. Mellema (of counsel), both of Jeffer Mangels Butler & Mitchell LLP's Irvine/Orange County office. No local Virginia counsel or in-house EFI lawyer appeared.

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 for the defendant in this case.