Litigation

RAH Color Technologies LLC v. Dalim Software GmbH

dismissed by joint stipulation

1:19-cv-00275

Terminated
2021-09-27

Patents at issue (1)

7729008

Summary

RAH Color Technologies LLC asserted U.S. Patent 7,729,008 against Dalim Software GmbH. The case was transferred from N.D. Ill. to N.D. Cal. and dismissed by joint stipulation on 2021-09-27.

Case overview & background

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

I'll research this case and its parties to build a sourced overview.

I have the basic scaffolding. Now let me verify the docket, the specific patents asserted against Dalim, and the IPR/outcome details.

Now let me pin down the IPR outcomes, the stay, and Dalim's corporate/product profile.

Case Overview

Parties. Plaintiff RAH Color Technologies LLC is a Virginia LLC that exists purely as a patent-holding and licensing vehicle — the complaint itself says the company was "formed [in 2005] as a vehicle for an on-going licensing program for companies whose products depend on Dr. Holub's innovations," after Dr. Richard A. Holub's earlier attempt to commercialize the technology through Imagicolor Corp. (1998) failed to attract investment (Compl., RAH v. Dalim, N.D. Ill. No. 1:19-cv-00275, Dkt. 1, ¶¶ 12–22). Holub is the named inventor of the asserted patents, holds a Ph.D. in neurophysiology, and was a longtime figure in graphic-arts color standards work (TAGA officer, RIT lecturer, CGATS contributor). Korean IP-market reporting classifies RAH squarely as an NPE and Dalim as a German foreign defendant (KOTRA IP dispute database). Defendant Dalim Software GmbH is a German developer of print/publishing production-workflow software; it does not manufacture presses or spectrophotometers — it sells software that manages, converts, proof-approves and distributes color image files. Notably, Dalim's U.S. litigation interests were handled by Perkins Coie (James F. Valentine, Wing Liang, Christopher Hanewicz, Andrew Klein) — the same firm and largely the same team representing Adobe in the parallel litigation — and Judge Illston appointed Valentine "liaison counsel for the counterparties on administrative matters" (MDL No. 3:18-md-02874-SI, Pretrial Order No. 2, ¶ 10). RAH was represented by Global IP Law Group (David Berten, Irwin Park, Alison Richards, Ragnar Olson).

Accused technology. The complaint targets "Dalim Accused Workflow Products," specifically DALIM ES (an enterprise review/approval and soft-proofing workflow system) and DALIM TWIST (file conversion, e.g., RGB-to-CMYK using ICC profiles), plus monitor-calibration and collaboration features. The infringement theory is essentially "compliance with the ICC color-management standard equals infringement": the complaint maps claim elements onto ICC profile internals — TRC (tone reproduction curve) tags, BToA tags with 1-D curves and multidimensional LUTs, the chad chromatic adaptation tag, gamutTag/gamut-warning display, ICC v4 Perceptual Reference Medium Gamut (PRMG) data structures, and ES's annotation/collaboration sharing during soft-proofing (Compl. ¶¶ 104–152). RAH alleged direct infringement under § 271(a) plus inducement under § 271(b), with knowledge of the '008 patent pleaded as of at least February 18, 2016 (¶ 140). Because the claims are pitched at standardized ICC profile data structures, virtually any ICC-compliant color workflow product was arguably exposed — which is exactly how RAH built a campaign across Adobe, Xerox, EFI, Kodak, Heidelberger, Fujifilm, X-Rite, R.R. Donnelley, Quad/Graphics, Ricoh and later Microsoft.

Patents. The family is a single 1996-priority specification, "System for Distributing and Controlling Color Reproduction at Multiple Sites" — a networked color-reproduction architecture in which each node measures its rendering device, derives device-independent calibration data, stores tone curves plus color transformations (including chromatic adaptation) in memory, and exchanges a shared "Virtual Proof" data structure so colors "appear substantially the same" across proofing devices and presses. The case metadata lists U.S. 7,729,008 ('008, issued June 1, 2010) — a system/method claim family covering a display, user interface, user-entered annotations associated with color image data, and stored tone curves and transformations derived at least partly from device-independent calibration data (claims 28–33 and 36–38 were the asserted/most-litigated set). I should flag a discrepancy: the as-filed Dalim complaint appears to have pleaded three patents-in-suit from that family — the '008 plus U.S. 6,995,870 ('870) and U.S. 7,312,897 ('897) — with the '008 counts (Counts IX–XIII) carrying the bulk of the pleading (Compl. Dkt. 1; RPX litigation record lists 3 patents-in-suit; a later complaint describes Dalim as an "'008" case). Treat the single-patent '008 framing in the case metadata as the operative/narrowed assertion, and the three-patent pleading as the as-filed scope. Also relevant: the '008's term ran from a 1996 priority date, pre-AIA, and RPX shows the patent as expired for failure to pay maintenance fees, which caps the damages tail.

Posture and venue. Filed January 14, 2019 in the N.D. Ill. (1:19-cv-00275), initially before Judge Ronald Guzman and reassigned the next day to Judge Thomas M. Durkin by Executive Committee order under the district's Patent Case Pilot Program (Dkt. 9); Durkin immediately issued his standard invitation to an off-the-record, FRE 408 settlement/narrowing conference before any answer was due (Dkt. 10). That local practice never played out: on January 25, 2019 the JPML issued a conditional transfer order and the case was transferred to the N.D. Cal. as 3:19-cv-00518-SI before Judge Susan Illston, as a tag-along to MDL No. 2874 (In re RAH Color Technologies LLC Patent Litigation), which already held the Adobe, Xerox and EFI actions (Dkt. 12, 13). Venue therefore mattered less as a forum fight than as a consolidation event: Dalim — a small German software vendor — was pulled into a coordinated pretrial with the industry's largest players, which multiplied RAH's leverage and let Adobe's IPR machine do the invalidity work for the whole defense group. In Pretrial Order No. 2 (April 2019) Judge Illston stayed damages discovery, ordered RAH's infringement contentions against Dalim by April 18, 2019 and Dalim's invalidity contentions by June 3, 2019, segmented claim construction, and — presciently — held she would not stay cases based on post-2019 IPR petitions absent good cause.

Why it's notable. Three things. (1) IPR linkage that actually favored the patentee. Adobe filed four IPRs on February 1, 2019 — IPR2019-00627 ('008), -00628 ('444), -00629 ('897), -00646 ('761) — and on September 10, 2019 Judge Illston stayed the MDL as to the remaining Adobe, Dalim and EFI cases in light of institution. But in the Final Written Decision of August 19, 2020, the Board held Adobe had not shown claims 28–33 and 36–38 of the '008 patent unpatentable (IPR2019-00627, Paper 124). The primary obviousness grounds turned on the ICC v3.0 specification and its user guide, and the decision includes a notable evidentiary fight over Adobe's inability to produce its ICC declarant, Phil Green, for cross-examination in Norway — a useful case study in third-party-declarant vulnerability. For Dalim, the practical result was that the '008 survived the very challenge the stay was waiting on. (2) Privity/RPI shadow boxing. RAH used the IPRs to attack the defense group's coordination, seeking discovery on joint-defense agreements among Adobe, Xerox, EFI, Heidelberger and Dalim and arguing they should be named real parties in interest; the Board declined to deny the petitions on that basis but expressly canvassed Dalim's role. (3) Outcome and pattern. The Dalim case did not go to judgment: RAH filed a stipulation of

Key legal developments & outcome

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

I'll research this case across multiple sources. Let me start with parallel searches.

Good foundation. Now let me dig into the N.D. Cal. docket specifics, Dalim's answer/counterclaims, and the IPR appeal.

RAH Color Technologies LLC v. Dalim Software GmbH — Litigation Chronology

Case trail: N.D. Ill. No. 1:19-cv-00275 (Durkin, J.) → JPML MDL No. 2874 → N.D. Cal. No. 3:19-cv-00518-SI (Illston, J.) → dismissed 2021-09-27.
Asserted patent (per case metadata): U.S. Patent No. 7,729,008 ("System for Distributing and Controlling Color Reproduction at Multiple Sites").
Bottom line: This case never reached claim construction, summary judgment, or trial. It was swept into a six-defendant MDL almost immediately, then stayed for two years pending Adobe's IPRs, and ended in a joint stipulated dismissal after the PTAB refused to invalidate the asserted '008 claims.

1. Filing and initial pleadings (Jan. 2019)

2019-01-14 — Complaint filed (N.D. Ill., Dkt. 1). RAH Color Technologies LLC sued Dalim Software GmbH (German workflow-software vendor) with a jury demand. The complaint pleaded infringement by Dalim's "Accused Workflow Products," principally TWIST (RGB→CMYK conversion using ICC profiles) and DALIM ES (soft-proofing, monitor calibration, annotations/collaboration).

  • The '008 counts targeted claims 28, 29, 30, 31, 33 and 36, alleging direct infringement and induced infringement under § 271(b) by Dalim's importation/sale of the products for customer use, plus training, technical guides, and integration support.
  • Willfulness/knowledge predicate: RAH alleged Dalim knew of the '008 patent "since at least February 18, 2016."
  • The same complaint also pleaded counts on other RAH portfolio patents (including the '897 patent), consistent with RAH's practice of asserting a family of related patents together. Note: the case metadata identifies the '008 as the patent at issue; RPX's docket summary lists three patents-in-suit for the N.D. Cal. case, which is consistent with the '008 plus related family members being pleaded.
  • Source: complaint text via RPX Insight, https://insight.rpxcorp.com/litigation_documents/13200928

2019-01-15 — Reassigned within N.D. Ill. (Dkt. 9). Executive Committee Order pulled the case from Judge Ronald Guzman into the court's Patent Case Pilot Program and reassigned it to Judge Thomas M. Durkin.

2019-01-16 — Judge Durkin's standing patent-case minute order (Dkt. 10). The court deferred any answer "until after" an informal, off-the-record settlement/issue-narrowing conference — so Dalim never answered in Illinois.

2. Transfer to the MDL (Jan. 2019) — the dispositive early event

2019-01-25 — JPML Conditional Transfer Order, MDL No. 2874 (Dkt. 12); civil case terminated in N.D. Ill. The Panel centralized RAH's campaigns against Adobe, Xerox, EFI, Kodak, Heidelberger, and Dalim for coordinated pretrial proceedings in N.D. Cal. before Judge Susan Illston.

2019-01-28 / 2019-01-29 — Record transferred; N.D. Cal. No. 3:19-cv-00518-SI opened (filed 2019-01-29).

Strategic significance: This was effectively a "transfer" in the sense you asked about, but it happened by JPML order rather than a § 1404(a) motion — no Rule 12(b)(3) venue fight or forum non conveniens motion by Dalim is reflected in the record I could locate. Dalim's counsel (Perkins Coie — James F. Valentine and Wing H. Liang) became liaison counsel for all MDL counterparties on administrative matters under Pretrial Order No. 2, giving Dalim outsized procedural influence relative to its size.

3. MDL case management, answer, and contention deadlines (Apr.–June 2019)

2019-04-04 — Initial MDL case management conference (transcript excerpted as Ex. 1038 in the parallel IPRs).

2019-04-08 — Pretrial Order No. 2 (MDL 3:18-md-02874-SI). Key terms:

2019-04-18 — Dalim answered and asserted declaratory-judgment counterclaims. Dalim appeared in the MDL as a "counter-party" asserting DJ counterclaims of non-infringement and invalidity of the asserted claims (the April 4 and subsequent transcripts and briefing consistently refer to "counter-party Adobe and counter-party Dalim"). Caveat: I could not pull the exact ECF number/text of Dalim's answer and counterclaims; the 2019-04-18 date comes from Pretrial Order No. 2's deadline and the PTO's recitation of the case posture.

2019-06-03 — Dalim's invalidity contentions served (per PTO No. 2).

4. Parallel PTAB proceedings — the decisive track

2019-02-01 — Adobe files four concurrent IPR petitions, including IPR2019-00627 against '008 claims 28–33 and 36–38 on pre-AIA § 103 grounds (ICC v.3.0, Photoshop, and other references). Companion petitions: IPR2019-00628 ('444), IPR2019-00629 ('897), IPR2019-00646 ('761). Adobe filed within one year of service of RAH's 2018 complaint.

RPI / privity fight. RAH argued Adobe's petition was a joint-defense product and that Quad/Graphics, Dalim, Xerox, Heidelberger, and EFI were unnamed real parties in interest (which would have triggered § 315(b) time bars). The Board rejected that argument, crediting Adobe's representation that no counterparty funded, directed, or reviewed the petitions, and that Adobe first told Xerox and EFI of its IPR plans on 2019-01-07. This was Dalim's one direct appearance in the PTAB record — as an alleged RPI, not a petitioner.

2019-04-25 — Board grants-in-part RAH's motion for additional discovery limited to privilege logs of Adobe's communications with MDL counterparties.

Mid-2019 — Institution decisions. The Board instituted the four IPRs (the district court's September stay expressly rested on "the IPR institutions").

2019-09-10 — Judge Illston stays the MDL as to the remaining cases (Adobe, Dalim, EFI) in light of the IPR institutions. This is the single most consequential pretrial ruling for Dalim: from this date forward the case was dormant. (Recited in RAH's later E.D. Tex. complaint, https://www.docketalarm.com/cases/Texas_Eastern_District_Court/2--20-cv-00088/RAH_Color_Technologies_LLC_v._Microsoft_Corporation/docs/1.pdf)

Plaintiff representatives

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

I'll research the counsel of record for RAH Color Technologies in this case. Let me search several sources.

Counsel of Record for Plaintiff RAH Color Technologies LLC

Bottom line: RAH was represented throughout by its own captive boutique, Global IP Law Group, LLC (GIPLG), of Chicago — the same firm that handled RAH's entire MDL 2874 campaign against Adobe, Heidelberg, EFI, Dalim, and others. Four GIPLG attorneys entered appearances. No separate N.D. Cal. local counsel and no in-house counsel of record appear in the sources reviewed (RAH is a small licensing vehicle for inventor Dr. Richard A. Holub, who is not an attorney of record).

Attorneys

# Name Role Firm / Office Docket basis
1 David Powers Berten Lead counsel (inferred from conduct, not a formal designation) Global IP Law Group, LLC — 55 W. Monroe St., Suite 3400, Chicago, IL 60603 N.D. Ill. ECF No. 6 (attorney appearance, 1/14/2019); N.D. Ill. ECF Nos. 1, 4
2 Alison Aubry Richards Plaintiff's filing/lead pleadings attorney Global IP Law Group, LLC — Chicago ECF No. 5 (appearance, 1/14/2019); signed Complaint (ECF No. 1), Corporate Disclosure Statement (No. 3), Notice of Patent Claims (No. 4)
3 Irwin Park, Ph.D. Of counsel — technical/patent attorney Global IP Law Group, LLC — Chicago ECF No. 7 (appearance, 1/14/2019)
4 Meagan C. Leslie Of counsel/associate (title not verified) Global IP Law Group, LLC — Chicago ECF No. 11 (appearance, 1/16/2019)

Notes on experience

  • David Berten — Founder and partner of GIPLG (founded 2009 with Steven Steger); he "directs the firm's litigation efforts" and works from the Chicago office. Best known as lead IP advisor on the Nortel patent portfolio sale ($4.5B to the Rockstar consortium) and as advisor to the unsecured creditors' committee in the Kodak bankruptcy patent sale (~$525M); prior to GIPLG he was at Kirkland & Ellis, Bartlit Beck, and Competition Law Group. Repeatedly named to IAM Strategy 300 and Lawdragon 500. He personally appeared for RAH "in all cases" at the MDL 2874 initial case management conference (Apr. 4, 2019, before Judge Illston) and is listed as a member of the N.D. Cal. bar in RAH's MDL report. (giplg.com bio; MDL CMC transcript, Ex. 1038 to IPR2019-00646)
  • Irwin Park, Ph.D. — Holds a doctorate (identified as "Irwin Park, Ph.D., Esq." in the MDL CMC transcript) and served double duty as RAH's technical declarant in the parallel Adobe IPRs on the same patent family (the "Dr. Park Declaration" filed with RAH's Patent Owner Preliminary Responses in IPR2019-00627/-00628/-00629/-00646).
  • Alison Aubry Richards — GIPLG attorney who was the signing/filing attorney on the complaint and Rule 7.1/patent notices in this case and appears on the MDL 2874 CMC transcript for RAH. Her specific title and standalone experience record were not verified in the sources reviewed.
  • Meagan C. Leslie — Appears only via her Rule 83.1 appearance (ECF No. 11); no independent biographical information verified. (UniCourt's party report also lists her among plaintiff's attorneys, consistent with the docket.)

Caveats / what I could not verify

  • Role labels are inferred. The docket does not designate "lead," "of counsel," or "local counsel." Berten is treated as lead because he argued for RAH "in all cases" at the MDL conference and GIPLG's own materials describe him as directing the firm's litigation. Richards is treated as the pleadings lead only because she executed the complaint and disclosures.
  • N.D. Cal. docket (3:19-cv-00518-SI) not pulled in full. After the § 1407 conditional transfer order (N.D. Ill. ECF No. 12, entered 1/25/2019; case transferred 1/28/2019, acknowledged as 3:19-cv-00518 on 1/29/2019), GIPLG continued as counsel and Berten/Richards/Park appear on the N.D. Cal. MDL record; I could not confirm whether any additional pro hac vice applications or substitutions occurred in 2019–2021. RPX lists the case as closed 9/27/2021, matching the joint stipulation granted at MDL ECF No. 154 (9/27/2021), which resolved 3:18-cv-03277, 3:18-cv-07465, and 3:19-cv-00518.
  • No sealed or withheld appearances identified for plaintiff — all four appearances are public docket entries.
  • Nothing found indicating pro bono, Department of Justice, or university counsel involvement.

For context (not requested): Dalim was defended by Perkins Coie LLP (Palo Alto) — James F. Valentine (appointed liaison counsel for the counterparties in MDL 2874) and Wing H. Liang, with Andrew N. Klein and Christopher G. Hanewicz also listed on the case.

Defendant representatives

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

I'll research defense counsel for Dalim Software GmbH, building on the Perkins Coie lead from the prior section.

Counsel of Record for Defendant Dalim Software GmbH

Bottom line: Dalim was represented throughout by Perkins Coie LLP from its Palo Alto office, which also represented Adobe in the same MDL. James F. Valentine was the relationship/lead partner — the MDL court formally appointed him "counsel for Adobe and Dalim" as liaison counsel for the counterparties in MDL No. 2874. No separate local counsel and no in-house counsel of record appear in the sources reviewed. Because the case was transferred to N.D. Cal. on 1/28/2019 before Dalim ever answered in Illinois, no defense appearance appears on the N.D. Ill. docket (1:19-cv-00275) — Dalim's appearances and defense activity occur in the MDL/transferred proceedings.

Attorneys

# Name Role Firm / Office Docket or record basis Experience note
1 James F. ("Jim") Valentine Lead counsel; court-appointed liaison counsel for the MDL counterparties (which included Dalim) Perkins Coie LLP, 3150 Porter Drive, Palo Alto, CA 94304 MDL 2874 CMC transcript, Apr. 4, 2019 — "For Defendants Adobe and Dalim Software GmbH: Perkins Coie LLP … BY: JAMES F. VALENTINE, ESQ., WING H. LIANG, ESQ." (Ex. 1038 to IPR2019-00646); Pretrial Order No. 1 (Apr. 8, 2019), ¶10: "The Court appoints James Valentine, counsel for Adobe and Dalim, as liaison counsel for the counterparties" (Ex. 2005 to IPR2019-00646) Senior patent trial lawyer; EE (Ohio State) with Hughes Aircraft engineering background; formerly Howrey partner. Won SJ of noninfringement in Business Objects v. MicroStrategy, 381 F. Supp. 2d 1107 (N.D. Cal. 2005), aff'd 393 F.3d 1366 (Fed. Cir. 2005); Intel v. Hyundai; Sanyo v. BYD; ITC Certain Data Storage Systems (EMC). Best Lawyers in IP/Patent Litigation 2018–2027; Managing IP "IP Star."
2 Wing H. Liang Core defense team member (second-chair / day-to-day); appeared at the MDL CMC for both Adobe and Dalim Perkins Coie LLP, Palo Alto Same CMC transcript (Ex. 1038); listed on Perkins Coie's RAH-IPR service list (WLiang@perkinscoie.com, PerkinsServiceRAHIPR@perkinscoie.com) throughout IPR2019-00627/-628/-629/-646 Perkins Coie patent litigator on the coordinated RAH defense; handled service/coordination on the parallel Adobe IPRs attacking the same Holub patent family. Specific title and standalone case record not verified.
3 Christopher G. Hanewicz Defense team member; principal correspondence point person for the joint defense group against RAH Perkins Coie LLP, Madison, WI — 33 East Main Street, Suite 201, Madison, WI 53703 3/4/2019 email to RAH's David Berten on behalf of the defense group (describing Dalim's participation in the pretrial-report process), reproduced as Ex. 2009 to IPR2019-00646; also copied on RAH–Adobe IPR service correspondence Partner. Handled MDL case-management jockeying and the joint-defense response to RAH's scheduling proposals; also part of the Adobe IPR team.
4 Andrew N. Klein Defense team member Perkins Coie LLP, Palo Alto Listed as a defendant-side attorney for Dalim/Adobe in the MDL 2874 party report (UniCourt); listed on RAH-IPR service emails (AKlein@perkinscoie.com, PAO) in Ex. 2009 Perkins Coie patent litigator on the Adobe/Dalim/Quad coordinated defense and Adobe's IPRs against RAH. Title and independent case record not verified.

Cross-check with the prior section

This confirms the "for context" note in the plaintiff-counsel section (Perkins Coie Palo Alto; Valentine, Liang, Klein, Hanewicz) and refines it: Valentine's role is not merely inferred — it is documented by the MDL court's liaison-counsel appointment. Hanewicz's office is Madison, Wisconsin, not Palo Alto.

Not counsel of record / no-shows

  • No in-house counsel of record. carol.w@dalim.com — Carol Werle, Dalim's CEO — appears on the defense email threads as a business contact, but is not an attorney of record and did not file an appearance. (The complaint notes RAH's 2016 demand letter was sent to "Dr. Carol Werle, the CEO of Dalim.")
  • No N.D. Ill. defense appearance. The N.D. Ill. docket shows only plaintiff appearances (ECF Nos. 5, 6, 7, 11) before the case was transferred on the CTO (ECF No. 12, 1/25/2019; transferred 1/28/2019; docketed in N.D. Cal. as 3:19-cv-00518 on 1/29/2019). Dalim never answered in Illinois.
  • No separate N.D. Cal. "local counsel" — unnecessary, since Perkins Coie's Palo Alto office is N.D. Cal.-based and Valentine is admitted in that district.

Caveats / what I could not verify

  • No formal "lead counsel" designation exists on the docket. Valentine is treated as lead based on the liaison-counsel appointment and his seniority; the others are grouped as defense team members.
  • Individual appearance entries in 3:19-cv-00518 were not pulled. MDL 2874 practice was to file consolidated pretrial papers in the lead MDL case (3:18-md-02874-SI), so some or all of these attorneys may have entered appearances only in the MDL lead case rather than in 3:19-cv-00518 itself. I confirmed their participation through the MDL CMC transcript, the liaison-counsel order, defense correspondence, and UniCourt's party report rather than through each member's ECF appearance number for the Dalim case.
  • Q2 2025 firm-name change: Perkins Coie combined with Ashurst, and Valentine's current profile is hosted as "Ashurst Perkins Coie LLP" at the same 3150 Porter Drive, Palo Alto address. The firm was still Perkins Coie LLP during this litigation. (profile)
  • ⚠️ Contradiction to flag — patents asserted. The case metadata lists only U.S. Patent 7,729,008. The complaint itself (N.D. Ill. ECF No. 1) asserted three patents — the '870, '897 and '008 patents — and RPX's docket entry for 3:19-cv-00518 records "3 Patents-in-Suit." This does not affect the defense-counsel analysis, but the metadata appears to understate the asserted patent count.
  • Related-entity wrinkle: RAH argued in the Adobe IPRs that Dalim Software, Inc. (the U.S. affiliate) was a real party in interest alongside the GmbH, emphasizing that "the same law firm—and the very same lawyers—represent all three companies" (Adobe, Quad, Dalim). The Board rejected the RPI argument but did not dispute the shared-counsel fact — corroborating that the Perkins Coie team above ran Dalim's defense.