RAH Color Technologies LLC v. Adobe Inc.

I'll research this case across multiple sources before drafting.

Good foundation. Now let me dig into the accused products, transfer history, and IPR outcomes.

Now let me nail down the IPR outcomes and how the case ended.

Case Overview

Parties and what they do. RAH Color Technologies LLC is a Virginia limited liability company (Alexandria, VA) formed in 2005 as the licensing vehicle for Dr. Richard A. Holub, a Ph.D. neurophysiologist who spent 1983–1994 in color technology roles at Eikonix/Eastman Kodak, Agfa/Bayer and SuperMac, later taught at RIT and served as president of the Technical Association of the Graphic Arts (TAGA). RAH is therefore best characterized as an inventor-started licensing entity rather than a classic acquired-patent PAE — the Stanford NPE Litigation Database tags RAH with the "Individual-inventor-started" category alongside "Product company," not "Acquired patents," and RAH told the MDL court in January 2019 that 27 companies had taken licenses averaging "less than $1 million" each. (MDL joint status report; Stanford NPE DB) Adobe Inc. is the San Jose-based software company whose color-management stack — ICC profile handling, the Adobe Color Engine, soft proofing — sits inside Photoshop, Illustrator, InDesign, Acrobat Pro and Creative Cloud. RAH's complaint carved the accused functionality into two buckets: the "Adobe Accused Creative Products" (Photoshop, Illustrator, InDesign and Acrobat Pro, including Creative Cloud Assets document/annotation sharing and Acrobat's shared-review feature) and the "Adobe Accused Photo Editing Products" (products whose soft-proofing feature applies a printer/output profile to simulate on-monitor appearance, with a color management module performing gamut mapping between monitor and output gamuts). RAH pleaded both direct infringement and §271(b) inducement of Adobe's end users, alleging knowledge of the '008 patent from at least December 19, 2013 and of the '761 patent from at least December 21, 2016. (complaint excerpt)

Patents and procedural posture. Four patents were asserted, all from Holub's color-reproduction portfolio: the '761 patent (7,791,761) — method claims (e.g., claims 7, 9–11) for transforming input color image data into output color image data using color profiles and performing gamut operations to improve the color match between reproductions; the '897 patent (7,312,897) — "System for Distributing and Controlling Color Reproduction at Multiple Sites," the foundational network-of-nodes architecture (prototype and production nodes, color measurement instruments, standardized observer meters); the '008 patent (7,729,008) — same family/specification, with claims (28–38) directed to user preferences such as GCR/UCR/maximum black and to communicating annotated color documents across a network; and the '444 patent (8,416,444) — same family, claim language centering on an "interactive conference" among networked "sites." RAH originally filed in the Northern District of Illinois on January 31, 2018 (No. 1:18-cv-00733), served Adobe February 1, 2018, and Judge Matthew F. Kennelly granted Adobe's §1404(a) motion to transfer on May 28, 2018 — reasoning that the accused products were developed in Northern California, that "no events of significance took place in this district," and pointedly that "reliance on this factor would permit a plaintiff in a patent infringement suit to pick its venue by its choice of attorneys," since RAH's real venue preference was its Chicago counsel. (Kennelly opinion) The case was docketed in N.D. Cal. as 3:18-cv-03277 (initially before Judge Orrick, then related to the MDL before Judge Susan Illston), became the lead case in In re RAH Color Technologies LLC Patent Litigation, MDL No. 2874 (N.D. Cal. No. 3:18-md-02874-SI) alongside Xerox, EFI, Kodak, Dalim and Heidelberger, and proceeded through MDL pretrial orders, infringement/invalidity contentions and a January 22, 2021 claim construction order construing "sites," "appear substantially the same" and "interactive conference." It ended by joint stipulation of dismissal (Dkt. 154), ordered by Judge Illston on September 27, 2021 (Dkt. 155), simultaneously dismissing the Adobe and Dalim cases. (docket; Pretrial Order #1)

Why it matters. The case is a useful specimen of three converging trends. First, IPR linkage as the main event: on February 1, 2019 Adobe petitioned for review of all four asserted patents — IPR2019-00627 ('008), -00628 ('444), -00629 ('897) and -00646 ('761) — with Perkins Coie's Christopher Kelley and James Valentine representing Adobe and Global IP Law Group (Berten, Richards, Park) for RAH. The PTAB entered final written decisions in -627 and -628 on August 19, 2020, and the proceedings generated a notable discovery ruling in which the Board (Paper 59, Dec. 12, 2019) compelled Adobe's expert, Dr. Charles Poynton, to answer questions about the factual basis for his declaration over work-product objections. (PTAB order; IPWatchdog FWD roundup, Sept. 9, 2020; PTAB Litigation Blog) Second, the MDL experiment for a single-inventor portfolio in color management — a field where essentially every press, proofer, spectrophotometer and imaging application depends on ICC-based color transformation, so RAH's campaign touched Adobe, Xerox, EFI, Kodak, Dalim, Heidelberger, X-Rite and Quad/Graphics at once, while the defendants ran a joint defense group and EFI counter-sued for declaratory judgment. Third, the venue story: the Kennelly transfer opinion is a frequently cited illustration of how a plaintiff's counsel-driven venue choice fares under §1404(a) when the accused products and the industry are concentrated in a single district, and it explains why Adobe's home forum became the consolidation point for the entire campaign.

Sourcing gaps to flag. I could not verify from the sources retrieved (a) which specific claims survived or were cancelled in each of the four Adobe IPRs — the January 2021 claim construction order references a finding in the '761 Final Written Decision regarding claim 15 but does not state the outcome; (b) whether the September 2021 dismissals followed a license or settlement payment, or whether any Federal Circuit appeal was taken from the PTAB decisions; or (c) any damages figure — none was publicly reported, and the case terminated without a judgment on the merits. Those points should be confirmed against PACER dockets for 3:18-cv-03277 and PTAB E2E before being stated as fact.

I'll research this case thoroughly. Let me start with parallel searches on the core case and its patents.

Excellent leads. Let me pull the docket and key orders.

Now let me dig into the other IPR outcomes and motion practice.

RAH Color Technologies LLC v. Adobe Inc., No. 3:18-cv-03277-SI (N.D. Cal.) — Litigation Chronology and Outcome

Bottom line: This case never reached trial. It was a tag-along member case in MDL No. 2874, and it was resolved by joint stipulation of dismissal on 2021-09-27, roughly two months after claim construction and after Adobe had knocked out most of the asserted claims at the PTAB. The litigation's real center of gravity was the four parallel Adobe IPRs, not Judge Illston's courtroom.

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1. Filing and initial pleadings

RAH was represented throughout by Global IP Law Group (David Berten, Alison Aubry Richards, Irwin Park), with Randall G. Block (Burke, Williams & Sorensen) as local counsel. Counsel list sourced from the PACER attorney report reproduced as Exhibit 2024 in IPR2019-00628: https://www.docketalarm.com/cases/PTAB/IPR2019-00628/

2. MDL centralization (the structural event that defined the case)

• 2018-11-29 — JPML hears argument on RAH's motion to centralize (Hearing Session Order, https://www.jpml.uscourts.gov/sites/jpml/files/First%20Amendment%20to%20Hearing%20Session%20Order-11-29-2018.pdf).
• 2018-12-06 — JPML initial transfer order creates In re RAH Color Technologies LLC Patent Litigation, MDL No. 2874, before Judge Susan Illston in N.D. Cal.; the Adobe case is consolidated with the Xerox, EFI, Kodak, Dalim, and Heidelberger actions for coordinated pretrial proceedings. Dkt. 1 in 3:18-md-02874.
• 2018-12-14 — Pretrial Order No. 1; initial CMC set for 2019-01-15.
• 2019-01-25 — CTO-1 finalizes transfer of the Heidelberger and Dalim cases.
• 2019-04-04 — MDL-wide initial case management conference (transcript excerpted as Ex. 1038 in IPR2019-00646). This produced Pretrial Order No. 2 and a Liaison Counsel appointment (Valentine).

Practical significance: Adobe's IPR petitions were drafted against an MDL-wide common-interest defense group, which became a discovery battleground (see §3).

3. Parallel PTAB proceedings — the decisive track

2019-02-01 — Adobe files four IPRs (within the § 315(b) one-year window from service):

Sources: IPR2019-00627 FWD (public version) at https://bannerwitcoff.com/wp-content/uploads/2020/09/PTAB-IPR2019-00627-124.pdf; IPR2019-00646 FWD (Paper 119, 2020-10-08); IPR2019-00646 institution decision (Paper 34, 2019-09-04).

Notable PTAB-side developments with direct strategic effect:

• 2019-04-25 — Board grants-in-part RAH's motion for additional discovery on real parties-in-interest, forcing Adobe to produce a privilege log of communications with the MDL counter-parties (Ex. 2018). RAH argued Xerox, EFI, Quad, Dalim, and Heidelberger were unnamed RPIs, which — if accepted — would have triggered the § 315(b) time bar via the 2017 Xerox complaint. The Board rejected the RPI theory in the institution decisions and reaffirmed it in the '008 FWD.
• 2019-12-12 — Paper 59: Board compels Adobe's expert Dr. Poynton to answer deposition questions about the factual basis of his testimony over work-product objections (Adobe Inc. v. RAH Color Techs., IPR2019-00627 et al., Paper 59). Analyzed at https://www.ptablitigationblog.com/a-compelling-decision-board-addresses-scope-of-work-product-protection/
• 2020-02-13 — Board grants-in-part Adobe's motion to submit supplemental information (Paper 74), the fight over authentication of the ICC v.3.0/v.3.01 specifications.
• 2020-05-28 — Consolidated oral hearing across all four IPRs (Paper 115).
• '008 outcome turning point: the Board excluded Dr. Green's declaration (Ex. 1010) because Adobe failed to make him available for timely cross-examination, and struck lead counsel Kelley's declaration (Ex. 1074) as attorney argument — leaving Adobe unable to authenticate ICC v.3.0/v.3.01. That evidentiary failure is why Adobe lost the '008 IPR outright. This is the single most instructive outcome in the file.

Effect on the district court case: The '761 FWD invalidated claims 7, 8, 10, 11, 13, leaving only claims 9 and 15 of the '761 patent. The 2021-01-22 claim construction order expressly frames one dispute around the " '761 Patent Final Written Decision with regard to the finding about claim 15" — i.e., the parties were litigating the preclusive/estoppel effect of the surviving-claim findings (35 U.S.C. § 315(e)). And per the claim construction record, RAH indicated it would drop the '897 patent from the case, which is consistent with an adverse '629 outcome (I could not confirm the '629 result directly — treat that inference as unverified).

4. Discovery milestones of strategic significance

• 2018-04-16 / 2018-05-14 — Adobe's initial disclosures and initial invalidity/unenforceability contentions served. These dates later mattered to Adobe's effort to amend.
• 2019-04-25 — PTAB compelled RPI-related discovery from Adobe (cross-cutting with the district case, since Adobe's joint-defense arrangements with the MDL defendants were at issue).
• 2020-10-17 — Deposition of Adobe's Jacob Munford (Ex. 2115 in the IPRs).
• 2020-11 / 2021-02-19 — RAH's opposition to Adobe's motion to amend invalidity contentions attaches Adobe's initial disclosures and contentions plus Quad/Dalim discovery correspondence, evidencing a discovery dispute over RAH's access to Quad's Dalim system. Dkt. 146.

5. Claim construction (Markman)

• 2021-01-21 — Markman hearing before Judge Illston (transcript filed 2021-02-23, Dkt. 147).
• 2021-01-22 — Claim construction order, Dkt. 120 (17 pages), covering three terms across the '870/'444 patents (note: the '870 patent was asserted against Dalim, not Adobe, but was construed in the coordinated proceeding):
  1. "sites" ('870 and '444) → construed as "locations". The court rejected RAH's proposed "devices in a network," reasoning that the specification consistently distinguishes "devices" from "sites." This was a win for Adobe and narrowed the claims against the network-architecture accused products.
  2. "appear substantially the same" ('870) → not indefinite; no construction (plain meaning). A win for RAH on indefiniteness.
  3. "interactive conference" ('444) → "a meeting between two or more persons conducted over a telecommunications network." The court rejected Adobe's proposed "simultaneous / real-time / mark-up" limitations

Counsel of Record for Plaintiff RAH Color Technologies LLC — RAH Color Techs. LLC v. Adobe Inc., No. 3:18-cv-03277-SI (N.D. Cal.)

Sourcing note up front: Adobe does not appear to have disputed RAH's counsel, and there is no secrecy issue here. The most complete contemporaneous attorney list I could locate is a PACER docket printout for 3:18-cv-03277-SI (reflecting filings through 5/16/2019), which Adobe reproduced as Exhibit 2024 in IPR2019-00628 (the "Adobe_Quad_Dalim_Attorneys" exhibit). That list is corroborated by the plaintiff's filings in the coordinated MDL (M18-md-02874-SI) and by RAH's PTAB submissions, which identify the same Chicago team. I was not able to review the full docket through the September 27, 2021 dismissal (e.g., later withdrawals/substitutions or any appearance by successor counsel), so the roster below should be treated as the team of record during the litigation's active phase (2018–2019) rather than a verified final list at dismissal.

Core team — Global IP Law Group, LLC (Chicago, IL)

Also within the GIPLG orbit: Ragnar Olson (USPTO Reg. No. 68,865) appears on RAH's IPR papers, and Meagan C. Leslie appears for RAH in the related RAH Color Techs. v. Dalim Software matter. I could not confirm that either entered an appearance on the 3:18-cv-03277-SI docket, so I would not list them as counsel of record in this case without pulling the full docket.

California counsel

Procedural context affecting the counsel picture

• The case originated as RAH Color Technologies LLC v. Adobe Systems Inc., No. 1:18-cv-00733 (N.D. Ill., Judge Kennelly), filed 1/31/2018 (closed 5/29/2018), and was refiled/opened in the Northern District of California as 3:18-cv-03277-SI on 6/4/2018 (the N.D. Cal. docket's "date filed"), then coordinated as part of In re RAH Color Technologies LLC Patent Litigation, M18-md-02874-SI before Judge Susan Illston. The 1/31/2018 docket appearances by Berten, Richards and Park track the original filing date.
• The same GIPLG team ran the parallel PTAB defense of the asserted patents against Adobe (IPR2019-00627, -00628, -00629 and -00646), which is why the plaintiff-side roster looks identical across the district court and IPR dockets. Judge Illston's claim construction order (Dkt. 120, filed 1/22/2021) and the MDL proceedings are the best sources for checking later filings; I did not obtain that full docket.
• Termination: dismissed by joint stipulation on September 27, 2021 — no judgment, injunction, or merits ruling against RAH, so nothing in the record reflects adversely on counsel.

Caveats

• No sealed filings affected the identity of counsel here; the limitation is simply that I could not retrieve the complete docket through dismissal, so any post-2019 substitutions or withdrawals are unverified.
• I did not fabricate or infer any attorney names: every individual above appears in a docket-derived source (Adobe IPR Exhibit 2024 printout of the 3:18-cv-03277-SI docket), an MDL filing, or a PTAB affidavit signed by that attorney.

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

Good initial data. Let me verify against the CourtListener docket and check a few additional names.

Let me check the original Illinois docket and later filings to confirm who remained counsel of record.

How Adobe's representation was structured

This case did not start in California. RAH filed against Adobe Systems in the N.D. Ill. on January 31, 2018 (No. 1:18-cv-00733, Judge Matthew F. Kennelly); Judge Kennelly granted Adobe's motion to transfer on May 28, 2018 (Justia docket), and the case was opened in the Northern District as 3:18-cv-03277-SI on June 4, 2018. That procedural path explains the counsel roster below: a Chicago-side appearance during the Illinois phase, then a Palo Alto–anchored team (Perkins Coie) for the California phase and the MDL.

The best primary source for Adobe's roster is the PACER "Attorney List" for 3:18-cv-03277-SI, which RAH captured and filed as Exhibit 2024 in IPR2019-00628 (transaction dated 05/21/2019) — Docket Alarm copy. I have not independently pulled the live PACER docket sheet, so the "role" designations below reflect PACER's own LEAD ATTORNEY / ATTORNEY TO BE NOTICED flags as captured in that exhibit, cross-checked against hearing transcripts and minute entries.

Counsel of record for Adobe Inc.

James F. Valentine — lead counsel (PACER: LEAD ATTORNEY, pro hac vice)

• Perkins Coie LLP, 3150 Porter Drive, Palo Alto, CA 94304-1212; JValentine@perkinscoie.com; 650-838-4300. Reg. No. 39,053.
• Appeared 04/02/2018 (carried over from the transferred Illinois case). Stated his appearance for Adobe and Dalim at the April 4, 2019 MDL case management conference (transcript, Ex. 1038 in IPR2019-00646), and was still listed as Adobe's attorney at the final April 30, 2021 case management conference (Dkt. 153).
• Note: Perkins Coie's lead patent litigator on Adobe's side across both forums — also named on Adobe's IPR papers (IPR2019-00627/628/629/646) and the corresponding Federal Circuit proceeding (Adobe Inc. v. RAH Color Technologies, notice of appeal filed Oct. 20, 2020).

Christopher G. Hanewicz — trial/merits counsel; Perkins Coie partner

• Perkins Coie LLP, 33 East Main Street, Suite 201, Madison, WI 53703; CHanewicz@perkinscoie.com; 608-663-7468.
• Appeared 03/20/2018. Handled much of Adobe's real-party-in-interest discovery correspondence with RAH in the parallel IPRs (numerous emails reproduced in the IPR exhibits) and appeared for Adobe at the April 30, 2021 CMC.
• Note: Wisconsin-based Perkins Coie patent litigator; the Hanewicz/Valentine pairing was Adobe's standard district-court team in this MDL.

Andrew Nicholas Klein — counsel; Perkins Coie (Palo Alto)

• Perkins Coie, 3150 Porter Drive, Palo Alto, CA 94304; aklein@perkinscoie.com; 650-838-4409.
• Appeared 06/06/2018; listed as an Adobe attorney at the April 30, 2021 CMC (Dkt. 153) and on the PTAB service lists (as "Andrew Klein (pro hac vice)" before the Board).
• Note: California-side member of the Adobe team; his role in the district court included ordinary case-management and discovery filings, and he was on the IPR correspondence service list.

Wing H. Liang — local counsel (N.D. Cal.); Perkins Coie (Palo Alto)

• Perkins Coie LLP, 3150 Porter Drive, Palo Alto, CA 94304; WLiang@perkinscoie.com; 650-838-4300.
• Appeared on Adobe's behalf (PACER list shows her under "representing Adobe Inc."). She personally filed Adobe's August 21, 2019 administrative motion to seal Exhibits K and L to her own declaration and Adobe's motion to amend its invalidity contentions (Dkt. 89–90), and appeared at the April 4, 2019 MDL CMC alongside Mr. Valentine.
• Note: the Palo Alto-based, California-barred lawyer who handled the actual ECF filings — the functional local-counsel role, even though Perkins Coie also had a pro hac vice lead.

Steven M. Lubezny — counsel during/after the Illinois phase; TERMINATED 09/20/2018

• Then Perkins Coie LLP, 131 S. Dearborn St., Suite 1700, Chicago, IL 60603; SLubezny@perkinscoie.com; 312-324-8400. Appeared 07/13/2018, terminated 09/20/2018 per PACER.
• Note: Chicago patent litigator retained in connection with the N.D. Ill. filing/transfer. His current firm bio expressly lists "Represented Adobe in patent infringement case against RAH Color Technologies LLC involving color management software" (Rice Technology Law Group). He later moved to Venable and is now at Rice Technology Law Group.

Attorneys frequently mistaken for Adobe's counsel here

• Christopher L. Kelley (Perkins Coie, Palo Alto; Reg. No. 42,714) — Adobe's lead PTAB counsel of record in IPR2019-00627/628/629/646 and the attorney who served RAH's pro hac vice papers, and the appellant's attorney on the Federal Circuit docket. He does not appear on the 3:18-cv-03277 PACER attorney list I could retrieve, so I would not describe him as district-court counsel of record absent the live docket.
• Randall G. Block (Burke, Williams & Sorensen) appears on the same PACER list but as a plaintiff-side filer; the Global IP Law Group attorneys (Berten, Park, Richards) are RAH's team. Several other names in aggregator listings (Cordrey, Mellema, Eiseman, Ward, Harradine, Leinen, Goranin, Marandola, Salceda, Stanat, Leslie) belong to the other MDL defendants (Xerox, EFI, Kodak, Heidelberg, Dalim) rather than Adobe.

Caveats and sourcing limits

• No Adobe in-house attorney appears of record in anything I found; Adobe's appearances are all Perkins Coie. If in-house counsel participated, they did not enter an appearance.
• Certain filings were sealed (e.g., Exhibits K and L to the Liang declaration, Dkt. 89, and the September 2019 invalidity-contentions briefing). Sealing went to exhibits and content, not to the identity of counsel — the attorney list itself is public PACER data.
• My roster is anchored to the May 21, 2019 PACER attorney list plus the April 30, 2021 minute entry (Dkt. 153), which collectively span most of the case's life and are consistent. I could not retrieve a full end-of-case docket sheet, so I cannot rule out a short-lived additional appearance between mid-2019 and 2021; nothing in the materials I reviewed suggests one.
• Partners' current firm affiliations may have changed since 2021 (Lubezny's has); Valentine, Hanewicz, Klein, Liang and Kelley were all at Perkins Coie during the litigation.