RAH Color Technologies LLC v. Eastman Kodak Company

I'll research this case systematically, starting with the parties and the '704 patent.

Key finding already: this case was closed after 14 days as an MDL tag-along. Let me dig into the transfer, the MDL outcome, and the '704 patent itself.

Now let me pin down the Kodak case's journey into the MDL and the ultimate outcome, plus the IPR fates of the related patents.

Case Overview

Parties. RAH Color Technologies LLC is a Virginia LLC (Alexandria, VA) whose sole owner, Dr. Richard A. Holub, is the named inventor on all of its patents — a classic inventor-owned licensing vehicle rather than an operating company. The complaint traces the arc candidly: Holub built a working color-calibration/soft-proofing prototype in the mid-1990s with lab space rented from RIT Research Corp., formed Imagicolor Corporation in 1998 to commercialize it, and when investment never materialized and Imagicolor dissolved, formed RAHCT in 2005 explicitly "as a vehicle for an on-going licensing program" (Compl. ¶¶14–16). RAHCT does not appear to make or sell anything; in a January 2019 MDL status report it stated that 27 companies had taken licenses over ten years, at an average of under $1 million per license. The defendant, Eastman Kodak Company (New Jersey corp.; principal place of business 343 State St., Rochester, NY), was accused of infringing through "print and print workflow production hardware and software that employ color measurement and management techniques" (Compl. ¶3). A pointed biographical detail: Holub spent roughly 1983–1994 as a color scientist at Eikonix/Agfa-Bayer/SuperMac — including at Eastman Kodak following Kodak's acquisition of Eikonix (Compl. ¶12) — so this is an independent inventor suing his former employer's home-town company, in that company's home town.

The technology and patents. The asserted family claims priority to February 26, 1996 and is directed to networked, device-independent color management: measuring a rendering device's actual colorant behavior, building a transformation (with 3-D gamut boundary arrays, tonal transfer curves, chromatic-adaptation transforms), and distributing that so color "appears substantially the same" across devices at different sites — essentially the architecture the industry later standardized as ICC profiles. The complaint asserts five patents, not just the '704: the '870 (6,995,870) and '897 (7,312,897) — network-interface color transformation with user preferences for gamut-related reproduction; the '008 (7,729,008) — storing calibration-derived tonal curves plus a chromatic adaptation transform and exposing GCR/UCR/max-black preferences; the '704 (8,760,704, "System for Distributing and Controlling Color Reproduction at Multiple Sites," issued June 24, 2014 from App. 13/796,888, 42 claims) — networked sites with files carrying gamut data structures, a soft-copy annotation program, and gamut adjustment "at least partly based upon state of calibration and capabilities of the rendering device"; and the '340 (8,638,340, "Color Calibration of Color Rendering Devices"). Note that the '704 is recorded as expired for failure to pay maintenance fees (RPX patent record), which materially caps the damages theory. (Your case metadata lists only the '704; the complaint in fact pleads all five, and some OCR text renders it as "8,860,704," which is a transcription error for 8,760,704.)

Posture and outcome — this case lasted 14 days. Filed Feb. 8, 2019 in W.D.N.Y. (Rochester) before Judge Charles J. Siragusa, it was pleaded by the plaintiff itself as a tag-along: the complaint recites the JPML's Dec. 6, 2018 consolidation order and expressly asks that Kodak be swept into In re RAH Color Technologies LLC Patent Litigation, MDL No. 2874 (N.D. Cal., Judge Susan Illston). The JPML filed CTO-2 on Feb. 13, 2019; no opposition was filed, the stay was lifted Feb. 21, 2019, and the W.D.N.Y. case was closed that same day, landing in N.D. Cal. as No. 3:19-cv-00982-SI. Venue therefore mattered only for the two weeks it existed — but it mattered a great deal: Kodak's principal place of business is in the district, giving both general jurisdiction and § 1400(b) residence, and W.D.N.Y. was already RAHCT's chosen forum against Xerox (6:18-cv-06746). The MDL then displaced it, which is the real structural story.

Why It's Notable

1. Plaintiff-driven MDL consolidation. It is unusual for an NPE to affirmatively seek centralization of its own assertion campaign; RAHCT did so across Adobe, Xerox, EFI, Heidelberg, Dalim, Quad/Graphics, and Kodak, consolidating nine related patents for pretrial proceedings (Pretrial Order #1, Dec. 14, 2018). That gave one judge control over a whole industry-wide licensing campaign.
2. The '704 was litigated hardest in the declaratory-judgment posture, not against Kodak. In Electronics For Imaging v. RAH Color Technologies, Judge Illston on June 3, 2019 refused to dismiss EFI's DJ claims on the '444 and '704, rejecting RAHCT's argument that § 287 marking (and the patents' expiration) eliminated any case or controversy; she held the method claims produced no markable device and that the marking record was too thin to dismiss at the pleading stage (In re RAH Color Techs. LLC Patent Litig., 18-md-02874-SI, Dkt. 71). EFI's SAC specifically targeted claims 17–18 of the '704 against EFI's Command WorkStation/ICC gamut-tag implementation — i.e., the infringement theory is that compliance with the ICC profile specification itself (gamut tags, PRMG, chromatic adaptation tags) reads on the claims. That is a standards-capture theory, and it explains why nearly every color-imaging vendor was named.
3. IPR linkage and an RPI fight. Adobe filed four concurrent petitions in February 2019 — IPR2019-00627 ('008), -628 ('444), -629 ('897), and -646 ('761) — heard at a consolidated oral hearing on May 28, 2020. RAHCT argued that Quad, Dalim, Xerox, Heidelberger, and EFI were unnamed real parties-in-interest (an implicit defensive-pooling theory); the Board rejected that argument. In the '008 final written decision the Board then found Adobe had not shown claims 28–33 and 36–38 unpatentable — a patent-owner win. Note the gap: the '704 itself does not appear to have been the subject of an Adobe IPR, so the patent central to your docket was never PTAB-tested.
4. Claim construction (Jan. 22, 2021, Illston J.): "sites" construed as "locations" (rejecting RAHCT's "devices"); "appear substantially the same" held not indefinite; "interactive conference" construed as "a meeting between two or more persons conducted over a telecommunications network."
5. Resolution. The MDL wound down in September 2021, with Adobe and Dalim dismissed by joint stipulation (Dkt. 154–155, Sept. 27, 2021) and the MDL closed. Holub's campaign did not produce a litigated judgment on the merits of the '704.

Sourcing Caveats

• I could not verify from a primary docket how the Kodak action specifically terminated (dismissal, license/settlement, or MDL wind-down order). The W.D.N.Y. docket is confirmed closed 2/21/2019 via RPX; the N.D. Cal. case (3:19-cv-00982-SI) termination is not documented in the sources I retrieved. Treat any settlement inference as unconfirmed.
• The specific 13 accused Kodak products (RPX's count) are identified in the complaint's counts but I could not retrieve those product names; the sources only confirm the generic "print and print workflow production hardware and software" description.
• The '704 patent's expired-for-nonpayment status comes from RPX's patent record; it is consistent with RAHCT's own argument in the EFI appeal that the '704 and '444 had expired, but I did not independently confirm via USPTO PAIR.
• Kodak's then-current commercial-printing product lines are not itemized in any source I retrieved; I have deliberately not speculated about product names (Prosper, NexPress, Prinergy, etc.) as accused instrumentalities.

I'll research this litigation systematically, starting with the docket and core case documents.

Key finding: the W.D.N.Y. case was closed after 14 days via MDL transfer. Let me trace the case into the MDL and check the '704 patent's treatment.

Now let me pin down the MDL member case number for Kodak, the '704 patent's status, and IPR outcomes.

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

Bottom line: This was not a litigated case in any meaningful sense. The W.D.N.Y. action survived 14 days as a Rochester docket, was swept into MDL No. 2874 (N.D. Cal., Judge Susan Illston) as No. 3:19-cv-00982-SI, was immediately stayed pending a settlement, and was dismissed with prejudice roughly three months after filing. No answer, no counterclaims, no Kodak-specific Markman ruling, no summary judgment, no trial, no appeal. Any "outcome" analysis for the '704 patent has to be read off the MDL-wide proceedings, not this docket.

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1. Filing & initial pleadings

Substance of the complaint. RAH asserted five patents — the '870, '897, '008, '704, and '340 — against Kodak's "print and print workflow production hardware and software," naming products including Prinergy, Insite Prepress Portal, and Creo workflow components. The counts were pleaded claim-by-claim with element-by-element charts (Counts I–XXI+), including direct and induced infringement theories under §§ 271(a) and (b). Notably, ¶ 3 of the complaint alleged knowledge of the '704 patent "since at least April 24, 2014" — a pre-suit notice date clearly designed to support induced-infringement and willfulness theories. The '704 counts (Counts XIX–XX, claims 17–18) were directed at workflow products and the "multidimensional color transformation … color matching between … a press" limitations.

Strategic posture of the filing. Paragraph 1 of the complaint expressly self-designated the suit as a tag-along to the already-formed MDL: "RAH Color Technologies believes this case with Kodak is a tag-along action that should also be included in the coordinated and consolidated MDL proceedings." RAH filed against the MDL's home-turf defendant (Kodak's headquarters is 343 State St., Rochester) and simultaneously asked to be moved out of Rochester. That is a filing made for leverage, not for trial.

There is also a personal-history wrinkle worth flagging for witness/prior-art purposes: the complaint's own background section concedes Dr. Holub worked for Eastman Kodak from 1983 to 1994 (via Kodak's acquisition of Eikonix Corp.), where he had "responsibility for developing and/or managing development of color technologies." Kodak was therefore simultaneously the alleged infringer, the inventor's former employer, and a potential source of prior art and § 102(b) onsale/public-use material.

No answer and no counterclaims were filed. Pretrial Order No. 2 (MDL Dkt., April 2019) states: "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." The case was resolved before Kodak's responsive pleading deadline ran.

2. Pre-trial motions of substance

• No motion to dismiss, transfer, or stay was litigated on the Kodak docket. The transfer happened by operation of JPML CTO-2, without opposition — the fastest possible route out of W.D.N.Y.
• The MDL-wide stay framework is the one substantive pretrial ruling that governed Kodak: Pretrial Order No. 2 (i) stayed damages discovery; (ii) stayed Kodak pending settlement finalization; and (iii) held that "The Court will not stay any cases based on pending IPR proceedings for petitions for IPR filed after 2019, absent a showing of good cause." That last provision is significant — it telegraphed to every defendant in the MDL that IPR petitions would not buy delay, which likely accelerated settlement pressure.
• The only contested early motion in the MDL family was RAH's Rule 12(b)(1) motion to dismiss EFI's declaratory judgment second amended complaint for lack of DJ jurisdiction (filed 2019-04-18; denied in relevant part), which addressed the '704 and '444 patents directly. RAH argued that because the '704 and '444 patents had expired and RAH had neither marked products nor pre-expiry notice to EFI, no damages were recoverable and hence no live controversy. The court rejected the argument as to method claims because RAH had asserted method claims of the '704 and '444 against EFI's customers (Ricoh, Quad/Graphics, Xerox). Elecs. For Imaging, Inc. v. RAH Color Techs. LLC, No. 3:18-cv-07465-SI (N.D. Cal. 2019), Dkt. 71. This is the single most important legal holding touching the '704 patent in the family: RAH's own counsel conceded the '704 was expired, reducing the case to a method-claim damages claim inside the § 286 six-year lookback.

3. Claim construction (Markman)

No claim construction ever issued against Kodak, because Kodak was stayed and then dismissed. But the '704 was slotted into the MDL's staged construction process:

• Pretrial Order No. 2 segmented claim construction. Segment 1 covered the '704, '909, '251, '260, and '340 patents, expressly "involving Counterparties Xerox, Heidelberger, Kodak, and EFI." Schedule: Patent L.R. 4-1 (2019-06-18), 4-2 (2019-07-09), 4-3 Joint Claim Construction and Prehearing Statement (2019-08-05), 4-4 close of claim construction discovery (2019-09-04), 4-5(a) RAH's opening brief (2019-09-19).
• Segment 2 produced the only fully litigated construction in the MDL: a hearing on 2021-01-21 and an order on 2021-01-22 construing "sites" as "locations," holding "appear substantially the same" not indefinite and not requiring construction, and construing "interactive conference" as "a meeting between two or more persons conducted over a telecommunications network" (Adobe/Dalim patents: '897, '008, '761, '444).
• ⚠️ Not confirmed: I could not locate a Segment 1 claim construction order resolving the '704 terms. Because Kodak exited in May 2019 and RAH ultimately dropped or dismissed much of the family, a Segment 1 ruling may never have issued. Treat the '704 construction as unresolved on the public record rather than assuming a ruling exists.

4. Discovery milestones

Effectively none as to Kodak. The MDL ran Patent L.R. 3-1/3-2 infringement contentions and 3-3/3-4 invalidity contentions on a global schedule (contentions served April–June 2019), but Kodak was exempted by the stay. Damages discovery MDL-wide was stayed ab initio until further notice. The MDL did see document and deposition activity among RAH, Adobe, EFI, Heidelberger, and Dalim (Adobe's 2021 motion for leave to amend invalidity contentions, Dkt. 127, drew on Quad/Heidelberger third-party discovery), but Kodak was not a participant.

5. Trial events, verdict, post-trial motions

None. No case in MDL No. 2874 was ever tried. No JMOL, new trial, or fee motions were decided on the merits; the Kodak dismissal was expressly "without fees or costs to any party," which forecloses a § 285 fee narrative either way.

6. Final disposition

• Kodak: Judge Illston's order on the parties' joint stipulation (2019, MDL No. 2874; the order carries a 2019-05-23 docket stamp — I have the text but not a clean PACER image): "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." Presumption: a paid license or confidential settlement, consistent with RAH's stated history of ~27 licensees at average values under $1 million. The settlement amount is not public.
• MDL-wide: RAH stipulated to dismissal of the Adobe (3:18-cv-03277-SI) and Dalim (3:19-cv-00518-SI) cases on 2021-09-27 (MDL Dkt. 154–155), followed by a Final Judgment from Judge Illston and closure of MDL No. 2874 (JPML Dkt. 52–53, "THIS MDL IS CLOSED").
• No appeal to the Federal Circuit was taken from the Kodak dismissal or from the MDL's final judgment as to Kodak.

7. Parallel PTAB proceedings and their effect

The IPR program was run by Adobe, not Kodak, in 2019:

No IPR was ever filed against the '704 patent — a logical consequence of its expiry and the absence of any meaningful damages exposure. That is the cleanest explanation for why the '704 was quietly dropped from the asserted set: RAH's infringement contentions in the MDL covered the '704, but RAH told the court in 2021 it "would remove the '897 Patent from litigation," and the surviving MDL patents were the '897, '008, '761, '444 (Adobe) and '870, '008 (Dalim).

Effect on the Kodak case: none directly. RAH had already captured Kodak in February–May 2019, before the first institution decisions. But the announced IPR program gave RAH a global reason to bank early settlements with peripheral defendants (Kodak, Heidelberger) at reasonable numbers while preserving resources to defend

I'll research the counsel of record for RAH Color Technologies in this matter, starting with docket and related-case searches.

Good foundation. Now let me pull the actual W.D.N.Y. docket for this case and check for local counsel.

The W.D.N.Y. case was short-lived (closed 2/21/2019 on MDL transfer). Let me find the complaint's signature block and whether local counsel appeared.

Bottom line

RAH Color Technologies was represented by its long-time outside patent litigation boutique, Global IP Law Group, LLC (Chicago). Three attorneys from that firm are documented as the plaintiff's counsel of record across the RAH portfolio campaign, including this Kodak action: David P. Berten, Irwin Park, and Alison Aubry Richards (with Ragnar Olson appearing in PTAB filings as back-up). No W.D.N.Y.-based local counsel is confirmed on the docket for this case — see the caveat below, which matters here because the case only lived in Rochester for 13 days.

Important posture note (affects "counsel of record")

This case was never litigated to judgment in W.D.N.Y. Per RPX's docket summary for 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, latest docket entry 2/22/2019. The JPML finalized CTO-2 on 2/21/2019 transferring the action into In re RAH Color Technologies LLC Patent Litigation, No. 3:18-md-02874-SI (N.D. Cal., Judge Susan Illston) (JPML Dkt. 48/50 in MDL No. 2874). It was a "tag-along" case — RAH's own complaint (Doc. 1, ¶ after venue allegations) affirmatively argued Kodak "is a tag-along action that should also be included" in the MDL. So the operative appearances are the MDL appearances, not the Rochester ones.

Counsel for Plaintiff RAH Color Technologies LLC

No in-house counsel for RAH appears of record. RAH's principal (Dr. Richard A. Holub, the named inventor, at 7012 Colgate Drive, Alexandria, VA) manages the company but is not a lawyer of record.

What I could not confirm — stated explicitly

1. W.D.N.Y. local counsel. I found no appearance, pro hac vice motion, or admission by any New York-admitted attorney on behalf of RAH in No. 6:19-cv-06112. Given the case was transferred 13 days after filing, it is plausible that local counsel was retained only for filing/service and never entered an appearance, or that Global IP filed pro hac vice. I could not retrieve the complaint's signature block or the W.D.N.Y. docket sheet text to verify either way. Any claim that a specific Rochester firm was RAH's local counsel in this case would be unsupported.
2. Whether Berten/Park/Richards were formally admitted pro hac vice in W.D.N.Y. Their pro hac vice admissions are documented in N.D. Cal. (the MDL and Adobe) and before the PTAB, not in W.D.N.Y.
3. Any sealed or later-appearing counsel. The docket as reflected in secondary sources shows only 14 days of activity; I did not find sealed filings or later substitution of counsel. Post-transfer, all Kodak-side activity (e.g., Kodak's appearance by Erika N. D. Stanat of Harter Secrest Emery LLP, Rochester, by telephone at the 4/4/2019 MDL CMC) occurred in N.D. Cal.

Do not confuse with

• James F. Valentine and Christopher L. Kelley (Perkins Coie, Palo Alto) — counsel for Adobe (petitioner) in IPR2019-00627/628/629 and for Adobe in the district court cases. Valentine was separately assigned "Liaison Counsel" for a counter-defendant in the MDL; he was not RAH's counsel.
• Niro, Scavone, Haller & Niro and Merzbach Law Office — named in ¶¶25–31 of RAH's Kodak complaint only as RAH's prior licensing/pre-suit correspondence counsel (2002–2003 letters to Kodak). They are not counsel of record.

Sourcing

• Complaint, RAH Color Techs. LLC v. Eastman Kodak Co., No. 6:19-cv-06112 (W.D.N.Y. Feb. 8, 2019), Doc. 1 — full text via RPX Insight and Docket Alarm (RAHCT Ex. 2229 in IPR2019-00628).
• RPX Insight docket page for 6:19-cv-06112 (filed 2/8/2019; closed 2/21/2019).
• JPML MDL No. 2874 docket (CTO-2, Dkt. 48 filed 2/13/2019; Dkt. 50 finalized 2/21/2019) via UniCourt.
• Transcript of 4/4/2019 MDL case management conference before Judge Illston, N.D. Cal. No. 3:18-md-02874-SI (appearances: Berten, Richards, Park for RAH; Stanat for Kodak), filed as Ex. 1038 in IPR2019-00646.
• RAH's Amended Mandatory Notice, IPR2019-00628 (Apr. 11, 2019) — lead/back-up counsel listing for the '870/'704 patents.
• Declaration of David P. Berten ISO Motion for Pro Hac Vice (Mar. 11, 2019) and Declaration of Alison A. Richards (Mar. 11, 2019), RAH PTAB filings — listing the six related matters by case number.
• N.D. Cal. docket, No. 3:18-cv-03277-SI, attorney listing (Berten = lead; Block = Burke, Williams & Sorensen), reproduced as RAHCT Ex. 2024.

I'll research this case and identify defense counsel of record.

I found a key lead — Kodak's MDL counsel was Erika N.D. Stanat of Harter Secrest & Emery. Let me verify the W.D.N.Y. docket entries and identify the full defense team.

Let me check the N.D. Cal. MDL tag-along docket (where Kodak actually litigated) and whether any appearance was filed in W.D.N.Y.

Bottom line

There is an important structural wrinkle: the W.D.N.Y. case you asked about lasted only 14 days. It was filed 2/8/2019, designated a potential tag-along, and closed on 2/21/2019 when the JPML's CTO-2 transferring it into MDL No. 2874 (N.D. Cal., Judge Susan Illston) was finalized and the stay lifted. (RPX Insight docket summary; JPML docket entries #47–50 reproduced on UniCourt).

As a result, I found no evidence of any attorney appearing on Kodak's behalf in the W.D.N.Y. docket itself — the docket activity I can source is limited to the complaint (Dkt. 1), the notice of potential tag-along (2/12/2019), the CTO (2/13/2019), and the finalized CTO/lifting of stay (2/21/2019). Kodak's actual defense team appears in the MDL proceeding in N.D. Cal.

Defense counsel of record — Eastman Kodak Company

Sourcing for the above appearance: the transcript of the April 4, 2019 MDL case management conference before Judge Illston lists "For Defendant Eastman Kodak Company: HARTER SECREST EMERY LLP … BY: ERIKA N. D. STANAT, ESQ.," and records her stating on the record, "This is Erika Stanat for the Eastman Kodak Company." (Ex. 1038, MDL CMC transcript, IPR2019-00646). She also appears on the consolidated N.D. Cal. attorney list for the RAH litigation (UniCourt attorney list).

In-house counsel references (context only — not counsel of record)

The complaint itself identifies Kodak legal-department personnel from the pre-suit licensing correspondence, but these individuals did not appear in the case:

• Peter Cody — then Assistant General Counsel and Vice President, Kodak Legal Department; recipient of Global IP Law Group's April 2, 2014 licensing outreach (Compl. ¶ 32).
• Charles E. Snee III — Kodak legal department; contacted by Niro, Scavone, Haller & Niro on February 18, 2002 (Compl. ¶ 25).

What I could not verify

• Whether any notice of appearance was ever filed in 6:19-cv-06112. I could not access the PACER docket sheet directly; my docket knowledge comes from RPX, UniCourt and MDL-side reproductions. Given the 14-day life of the case and the JPML stay, it is plausible no appearance was entered at all. If you need a definitive answer, pull the PACER docket for 6:19-cv-06112 (Dkt. 2–5) directly.
• Additional Kodak counsel (e.g., a second Harter Secrest associate, or outside patent counsel retained for the IPRs). I found no other Kodak attorney named in any RAH-related filing. Notably, the AIA petitions against the RAH patents (IPR2019-00627/‑628/‑629 and ‑646) were filed by Adobe and Xerox through Perkins Coie (James F. Valentine, Christopher L. Kelley, Andrew N. Klein, Wing Liang, Christopher Hanewicz) — Kodak is not among the petitioners I identified, so Kodak did not have separate PTAB counsel in those proceedings.
• Kodak's MDL tag-along case number. The MDL's related-case list is 18-cv-3277, 18-cv-7464, 18-cv-7465, 19-cv-0517 and 19-cv-0518. 19-cv-0517 is Heidelberger, so Kodak is likely 3:19-cv-00518-SI — but I could not confirm that assignment, so treat it as an inference, not a sourced fact.

Practical note for your analysis

Because Kodak's counsel of record sits in the MDL (N.D. Cal. 3:18-md-02874-SI / tag-along), any further counsel research — pro hac vice applications, additional appearances, and the eventual termination of Kodak from the MDL — should be run against that docket rather than the closed Rochester case. The Rochester filing was essentially a venue placeholder; RAH itself pleaded that the Kodak action "is a tag-along action that should also be included in the coordinated and consolidated MDL proceedings" (Compl., MDL discussion).