RAH Color Technologies LLC v. Eastman Kodak Co.

I'll research this case thoroughly before drafting the overview.

Key finding already: the Kodak complaint appears to have asserted five patents that do not include the '444. Let me verify that and dig into the IPR and MDL history.

Case Overview: RAH Color Technologies LLC v. Eastman Kodak Co., No. 6:19-cv-06112 (W.D.N.Y.)

Parties and their business models. RAH Color Technologies LLC is a Virginia LLC operating out of a residential-style office at 7012 Colgate Drive, Alexandria, Virginia. It is wholly owned and managed by Dr. Richard A. Holub, a Ph.D. neurophysiologist who spent roughly two decades in color science — including a stint at Eastman Kodak itself, following Kodak's acquisition of Eikonix Corp., which Holub joined in 1983 — and later at Agfa/Bayer and SuperMac, plus adjunct teaching at RIT and a presidency of the Technical Association of the Graphic Arts. Holub formed Imagicolor Corp. in 1998 to commercialize a display-calibration/soft-proofing prototype; the venture never raised funding and dissolved, so in 2005 he formed RAHCT as "a vehicle for an on-going licensing program." That makes RAHCT a textbook individual-inventor PAE: no products, no manufacturing, a portfolio of roughly 35 patents all naming Holub, and a licensing-first model (RAHCT told the MDL court that 27 companies had taken licenses, with an average license value under $1 million). Kodak, by contrast, is the operating company — a New Jersey corporation headquartered at 343 State Street, Rochester, New York, and a legacy imaging giant then rebuilding around commercial print (plate-making, workflow software, digital presses).

The accused technology. The complaint's substantive allegations are thin — it says only that Kodak "manufactures, makes, uses, sells, imports, and offers for sale print and print workflow production hardware and software that employ color measurement and management techniques," specifically print and print-workflow production hardware and software. RPX's docket analytics record 13 accused products; the complaint itself does not appear to chart them individually. For a concrete sense of what RAHCT meant, the contemporaneous campaign filings identify the Kodak software family at issue: Kodak ColorFlow, Kodak InSite Prepress Portal, and Kodak Preps Imposition, as confirmed by a Kodak-related declarant's testimony in the parallel RAH v. Quad/Graphics venue fight. The theory across the campaign was that ICC-profile-based color management (device-independent color, tone reproduction curves, multi-dimensional transforms, gamut mapping, and networked proofing/approval) practiced by commercial print workflows reads on Holub's 1990s patent family.

Patents asserted — and an important correction to the existing summary. As filed on February 8, 2019, the Kodak complaint asserted five patents, and the '444 was not among them: U.S. Patent Nos. 6,995,870, 7,312,897, 7,729,008, 8,760,704 (all titled "System for Distributing and Controlling Color Reproduction at Multiple Sites" — a single specification family claiming priority to Application No. 08/606,883, filed February 26, 1996) and 8,538,340 ("Color Calibration of Color Rendering Devices"). In one line each: the '870/'897/'008/'704 family claims networked color-management systems in which calibration data at each "site"/node drives transforms so output "appears substantially the same" within each device's gamut, with virtual proofs and annotation/conferencing; the '340 claims calibration of rendering devices. The '444 — a later-issued member of the same family (issued April 16, 2013) claiming memory storing device-independent color units, tone-transfer curves, multi-dimensional transforms, a 3-D gamut array, and tag-structured profile files plus a spectrophotometer-type measurement instrument — was asserted against Adobe, Xerox, Heidelberg, Agfa, and X-Rite, not Kodak. The prior summary's statement that the Kodak complaint listed the '444 as "Exhibit 5" appears to be a misreading: in the Kodak complaint Exhibit 5 was the '008 patent; the '444 was Exhibit 5 in the separate X-Rite complaint. I could not confirm any amended Kodak complaint adding the '444 before dismissal, so the metadata for this case should be corrected, or at minimum flagged as unverified.

Procedural posture and why venue mattered. RAHCT filed in Kodak's home district — W.D.N.Y., Rochester Division, before Judge Charles J. Siragusa — pleading general jurisdiction and § 1400(b) venue because Kodak "resides in this District." Choosing Rochester was strategically obvious: Kodak's headquarters is there, and Holub's own professional history is there. But the case lasted barely two weeks as a W.D.N.Y. matter. The JPML had already created MDL No. 2874, In re RAH Color Technologies LLC Patent Litigation, before Judge Susan Illston in N.D. Cal. (Dec. 6, 2018), centralizing the Adobe, Xerox, and EFI actions; Kodak was designated a tag-along, and CTO-2 was finalized on February 21, 2019, pulling 6:19-cv-06112 into the MDL. RPX shows the W.D.N.Y. docket closing on that transfer date. Per RAHCT's own later recitation, the Kodak case was dismissed by agreement of the parties on May 16, 2019 — before any Markman or summary-judgment activity. Judge Illston then stayed the remaining MDL cases on September 10, 2019 pending the Adobe IPRs.

Why the case is notable. (1) It is a campaign, not a case. RAHCT sued roughly a dozen color-imaging companies — Adobe, Xerox, EFI, Heidelberg, Dalim, Kodak, Agfa, X-Rite, Quad/Graphics, Microsoft — and the JPML rolled the pretrial proceedings into MDL 2874. Kodak was one of the fastest exits, alongside Heidelberg (dismissed July 23, 2019) and Xerox (October 15, 2019); Adobe and Dalim were dismissed in September 2021, and Judge Illston entered final judgment closing the MDL. (2) IPR linkage. On February 1, 2019, Adobe filed four IPRs: IPR2019-00627 ('008), IPR2019-00628 ('444), IPR2019-00629 ('897), and **IPR2019-00646

I'll research this case systematically, starting with the docket and any coverage.

Bottom line

The Kodak action never became a litigated case. It was filed in W.D.N.Y. in February 2019, transferred into the N.D. Cal. MDL within about two weeks, stayed almost immediately pending a settlement, and dismissed with prejudice, without fees or costs, by stipulated order entered 2019-05-16 (N.D. Cal. No. 3:19-cv-00982-SI). There was no answer, no motion practice of substance, no Markman, no discovery of consequence, no trial, and no appeal. The only substantive adjudication touching the '444 patent came in a parallel Adobe IPR (IPR2019-00628), where RAH won a complete Final Written Decision on 2020-08-31.

Important sourcing caveat up front: the case metadata lists the '444 patent as the patent at issue, but the face of the W.D.N.Y. complaint — reproduced verbatim as Exhibit 2229 in IPR2019-00628 and as RPX litigation document 13228848 — enumerates five different patents: the '870, '897, '008, '704 and '340. The '444 patent appears in the contemporaneous RAH complaints against other defendants (e.g., Ricoh, E.D. Pa., where '444 is Exhibit 5) and PTAB papers describe Kodak as "also been accused of infringing the '444 patent" through the MDL pleadings. I could not independently pull the Kodak docket to resolve the discrepancy, and I flag it rather than paper over it.

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Chronology

1. Pre-suit consolidation (2018-12 → 2019-01)

• 2018-12-06 — JPML orders RAH's cases against Adobe, Xerox and Electronics For Imaging transferred to N.D. Cal. before Judge Susan Yvonne Illston for coordinated pretrial proceedings: In re RAH Color Technologies LLC Patent Litigation, MDL No. 2874, No. 3:18-md-02874-SI. (Recited in the Kodak complaint; also recited in the PTAB institution papers.)
• 2019-01-15 — MDL initial status conference (Pretrial Order #1, cited in In re RAH, No. 18-md-02874-SI (N.D. Cal.)).
• 2019-01-25 — JPML finalizes conditional transfer of the Heidelberger and Dalim actions into the MDL.
• 2019-02-01 — Adobe Inc. files four IPR petitions against RAH's patents, including IPR2019-00628 on the '444 patent (with IPR2019-00627 ('008), -00629 ('897) and -00646 ('761)). Note the sequencing: the IPRs were filed a week before RAH sued Kodak.

2. Filing and initial pleadings (2019-02)

• 2019-02-08 — RAH Color Technologies LLC files RAH Color Technologies LLC v. Eastman Kodak Co., No. 6:19-cv-06112 (W.D.N.Y.), assigned to Judge Charles J. Siragusa, pleading willful infringement under 35 U.S.C. § 271. (Complaint, Doc. 1, 59 pp.; RPX Insight docket summary; the complaint text is reproduced as RAHCT Ex. 2229 in IPR2019-00628.) The complaint expressly asks that the case be treated as a tag-along to MDL 2874 under JPML Rule 7.1, and pleads personal jurisdiction/venue on Kodak's Rochester principal place of business (343 State St.).
• The complaint's background is notable for the Kodak relationship: Dr. Holub worked at Eastman Kodak from 1983–1994 (via Kodak's acquisition of Eikonix), before Agfa/Bayer and SuperMac — i.e., the inventor was a former Kodak employee, a fact with obvious prior-art, derivation and willfulness overtones for a case that never got litigated.
• Answer / counterclaims: I found no record of an answer, counterclaim, or Rule 12 motion in W.D.N.Y. RPX reports the case as open 02/08/2019 and closed 02/21/2019 (14 days in litigation; last docket entry 02/22/2019), consistent with an early transfer rather than merits briefing. Treat "no answer filed" as probable, not confirmed.

3. Transfer into the MDL and immediate stay (2019-02 → 2019-04)

• 2019-02-21 — The action opens in N.D. Cal. as No. 3:19-cv-00982-SI, one of the related MDL cases (the MDL caption lists 18-cv-03277 Adobe; 18-cv-07464, 18-cv-07465 EFI; 19-cv-0517; 19-cv-0518; and 19-cv-982 Kodak).
• 2019-04-04 — MDL case management conference before Judge Illston; Kodak appears by telephone through Erika N. D. Stanat of Harter Secrest & Emery LLP (Rochester). RAH is represented by Global IP Law Group (David Berten, Alison Aubry Richards). (Conference transcript excerpted as Ex. 1038 in IPR2019-00646.)
• 2019-04-08 — Pretrial Order No. 2 in the MDL: "Stay as to Defendant Eastman Kodak Co.: The Court stays the case against Eastman Kodak Co. (Case No. 19-cv-00982-SI) pending finalization of the settlement or until further notice." This is the pivotal order — the case was judicially stayed for settlement roughly two months after filing.

4. Final disposition (2019-05-16)

• 2019-05-16 — Judge Illston enters the Order on Joint Stipulation of Dismissal (N.D. Cal. filing ID infdco20190523740): "all claims in the case of RAH Color Technologies LLC v. Eastman Kodak Co., No. 3:19-cv-00982-SI shall be dismissed with prejudice and without fees or costs to any party. The Stipulation is GRANTED."
• No judgment on the merits, no consent judgment, no injunction, no damages, no prevailing-party fee motion. No appeal — a dismissal by joint stipulation with prejudice is not appealable by either side. The terms of the underlying settlement/license (if any) are not public.
• Because the case exited before Markman, none of the "pre-trial motions of substance" categories in your request exist for Kodak: no 12(b)(6), no § 1404/1406 transfer motion (transfer came via JPML), no stay-pending-IPR motion (the stay was a settlement stay, not an IPR stay), no summary judgment, no Daubert, no discovery motions.

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The parallel PTAB proceeding on the '444 patent — the real substantive fight

Kodak never petitioned the PTAB. The '444 challenge came from Adobe Inc. v. RAH Color Technologies LLC, IPR2019-00628 (PTAB), covering claims 11, 13, 15, 18, 19, 26 and 27.

Points from that proceeding with cross-cutting significance:

• Real party in interest: RAH argued Adobe should have named Quad/Graphics, Dalim, Xerox, Heidelberger and EFI as RPIs — and specifically pointed to Kodak as another MDL co-defendant accused of infringing the '444 patent as evidence of a common interest. The Board rejected the RPI argument at institution and, because neither side briefed it after institution, reaffirmed that "Quad, Dalim, Xerox, Heidelberger, and EFI are not RPIs." This is the closest thing in the record to confirming that the '444 patent was in fact asserted against Kodak in the MDL.
• Licensing/industry-recognition evidence: RAH argued that seventeen companies — thirteen of them ICC members, three ICC founding members —

I'll research the counsel of record for RAH Color Technologies in this W.D.N.Y. case and related matters.

Initial results point to Global IP Law Group in Chicago as RAH's counsel. Now I need the specific W.D.N.Y. docket appearance and local counsel.

The W.D.N.Y. case was transferred to MDL 2874 within 14 days. Let me check the complaint's signature block and any docket appearances.

Counsel of Record for Plaintiff RAH Color Technologies LLC — W.D.N.Y. No. 6:19-cv-06112

Threshold caveat on sourcing (important)

This case existed on the W.D.N.Y. docket for only 14 days. RAH filed the complaint on Feb. 8, 2019 (Dkt. 1); the JPML issued a Notice of Potential Tag-Along on Feb. 12, 2019, filed CTO-2 on Feb. 13, 2019, and the conditional transfer order was finalized Feb. 21, 2019, lifting the stay and sending the action into In re RAH Color Technologies LLC Patent Litigation, MDL No. 2874 (N.D. Cal., Judge Susan Illston). RPX records the W.D.N.Y. docket as closed 2/21/2019 with a last entry on 2/22/2019.

Consequence: there was almost certainly no Rule 83.1/local-rule admission, no notice of appearance practice, and no answer or motion practice in W.D.N.Y. before transfer. So "counsel of record" for this case is established by (a) the signature block of the Dkt. 1 complaint and (b) RAH's counsel of record in the MDL/tag-along case after transfer. I could not pull the actual W.D.N.Y. docket sheet or the complaint's signature page in this session, so I am identifying the attorneys from the MDL record and parallel RAH dockets, and I flag below exactly which inference rests on which source. No sealed-material issue is involved; the gap is a docket-access gap, not a sealing gap.

The attorneys

Explicitly unresolved points

• Local counsel: I found no confirmed W.D.N.Y. local counsel for RAH. Because the action was tagged and transferred within two weeks, it is plausible RAH filed with only its Global IP team and no Rochester/Buffalo co-counsel, but I cannot confirm that from a docket sheet — treat as an open item requiring a PACER pull of the Dkt. 1 signature block and the attorney-appearance tab. (By contrast, Kodak's W.D.N.Y./MDL counsel is confirmed: Erika N. D. Stanat, Harter Secrest & Emery LLP, 1600 Bausch & Lomb Place, Rochester — she appeared by telephone for Kodak at the April 4, 2019 conference.)
• Exact W.D.N.Y. appearances: no separate notice of appearance by any Global IP attorney in 6:19-cv-06112 is documented in the sources I could reach. The JPML materials reference only the complaint (Dkt. 1) as the W.D.N.Y. filing.
• Post-transfer docket: after transfer the Kodak action became one of the MDL member cases listed in the April 4, 2019 transcript as "18-cv-3277, 18-cv-7464, 18-cv-7465, 19-cv-0517, 19-cv-0518." I could not verify which of 19-cv-0517/0518 is the Kodak tag-along; that should be confirmed before citing.
• Firm naming: the firm appears as "Global IP Law Group, LLC" in 2018–2019 filings; confirm current entity name before filing anything that relies on it.

Confidence

• High confidence: Berten, Richards, and Park are RAH's counsel team for this case, via Global IP Law Group, Chicago — grounded in the N.D. Cal. docket in 3:18-cv-03277, the certified April 4, 2019 MDL hearing transcript (Ex. 1038 in IPR2019-00646), and the MDL joint status report (Ex. 2012 in IPR2019-00646).
• Medium confidence: that Berten personally signed the W.D.N.Y. complaint — strongly implied by his role as the only "LEAD ATTORNEY" on the parallel RAH complaints, but not verified against Dkt. 1 in 6:19-cv-06112.
• Low confidence / unverified: absence of local counsel; the specific MDL member case number for Kodak.

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

Bottom line

Kodak's only documented attorney of record in this matter is Erika N. D. Stanat of Harter Secrest & Emery LLP (Rochester, N.Y.). The case did not stay in W.D.N.Y. long enough for a robust appearance record: it was filed 2/8/2019, conditionally transferred to MDL No. 2874 on 2/21/2019 (as N.D. Cal. No. 3:19-cv-00982-SI), stayed pending settlement on 4/8/2019, and dismissed with prejudice on 5/16/2019 — 14 days of W.D.N.Y. docket life per RPX. I found no notice of appearance, answer, or Rule 7.1 disclosure filed by Kodak on the W.D.N.Y. docket in the materials I could retrieve, and I found no evidence of additional outside counsel or identified in-house counsel.

Defendant's counsel of record

Source support

• Appearance at the MDL CMC (4/4/2019): the certified transcript's appearance block reads: "For Defendant Eastman Kodak Company: HARTER SECREST EMERY LLP 1600 Bausch and Lomb Place Rochester, New York 14604 BY: ERIKA N. D. STANAT, ESQ. (By Telephone)," and the transcript records "This is Erika Stanat for the Eastman Kodak Company." (Ex. 1038 to IPR2019-00646, available on Docket Alarm.)
• Common-interest group: Adobe's privilege log (Ex. 2018, IPR2019-00646, served 5/21/2019) lists a 2/29/2019 call with "Erika Stanat" among counsel for "Adobe, Dalim, Xerox, EFI, Kodak, and Heidelberger."
• Case posture / no answer filed: RPX Insight docket page for RAH Color Techs. LLC v. Eastman Kodak Co., No. 6:19-cv-06112 (W.D.N.Y.) (Judge Charles J. Siragusa; filed 2/8/2019; closed 2/21/2019; 14 days in litigation); JPML CTO-2 finalized 2/21/2019 lifting stay and transferring NYW/6:19-cv-06112 into MDL No. 2874 (JPML docket Nos. 48–50).
• Stay and dismissal: Pretrial Order No. 1 (Illston, J., 4/8/2019): "Stay as to Defendant Eastman Kodak Co.: The Court stays the case against Eastman Kodak Co. (Case No. 19-cv-00982-SI) pending finalization of the settlement or until further notice." Order on joint stipulation of dismissal (5/16/2019): all claims in No. 3:19-cv-00982-SI dismissed with prejudice, without fees or costs.

Important caveats

1. The '444 patent does not appear in Kodak's W.D.N.Y. complaint. The complaint (Dkt. 1, 6:19-cv-06112) asserts the '870, '897, '008, '704 and '340 patents. The '444 patent as "Exhibit 5" matches the RAH Color Technologies v. Ricoh complaint filed in E.D. Pa. (exhibits: '870, '251, '008, '546, '444, '704, '314). That said, the '444 was plainly part of the Kodak dispute in the MDL/PTAB record — the Board's IPR2019-00646 institution decision notes "another defendant, Kodak, has also been accused of infringing the '444 patent" (Paper 15, 3), and RAH's mandatory notices list Kodak among the '444-related cases. So the metadata attribution is defensible at the MDL level but is not literally correct as to the W.D.N.Y. complaint's exhibit list.
2. Counsel may not have formally "appeared" in W.D.N.Y. Because the case was transferred within two weeks and then stayed/dismissed, the appearance I can document is in the N.D. Cal. member case and the MDL proceedings, not on the W.D.N.Y. docket. I could not verify a W.D.N.Y. notice of appearance from the sources available to me; treat the W.D.N.Y. docket itself as unconfirmed on this point.
3. No national coordinating counsel identified. Given the common-interest group and the MDL structure, Kodak likely also had coordination with defense counsel for Adobe (Perkins Coie — Christopher L. Kelley, James F. Valentine), Xerox, EFI, Dalim and Heidelberger, but I found no filing identifying any firm other than Harter Secrest as Kodak's counsel, and I will not infer one.
4. No in-house counsel identified. No Kodak corporate counsel name appears in any document I could retrieve. Nothing indicates the filings were sealed as to counsel identity; the limitation is simply the thin docket.

If you need certainty, the two records to pull are the full N.D. Cal. docket in No. 3:19-cv-00982-SI (counsel/ECF participant list, which persists after dismissal) and the W.D.N.Y. docket in 6:19-cv-06112 — the latter likely shows no defendant appearance at all.