RAH Color Technologies LLC v. Heidelberger Druckmaschinen AG

I'll research this case and the surrounding context before drafting.

Found the docket. Key detail: this N.D. Ill. case was transferred to MDL 2874, not simply dismissed. Let me verify what happened after transfer.

Let me pin down the post-transfer disposition of the Heidelberg case and the IPR outcomes for the '008 patent.

Case Overview

Parties. RAH Color Technologies LLC is a Virginia limited liability company that exists purely as a patent-holding and licensing vehicle — the complaint states it is owned and managed by Dr. Richard A. Holub, a neurophysiologist (Ph.D.) who is the named inventor on all of its patents and who spent 1983–1994 as a color scientist/engineer at Eikonix/Eastman Kodak, Agfa/Bayer and SuperMac before founding Imagicolor Corp. in 1998 to commercialize a calibration/soft-proofing prototype; when that venture failed to raise capital, he formed RAH in 2005 "as a vehicle for an on-going licensing program" (Complaint ¶¶ 1, 14–22, Ex. 2230 to IPR2019-00628). So this is an inventor-owned PAE — not an operating company, university, or corporate spin-out; RAH told the MDL court it had signed 27 licensees over ten years at an average of under $1 million each (Joint Preliminary Status Report, 18-md-02874). The defendant, Heidelberger Druckmaschinen AG, is the German printing-press and prepress-equipment manufacturer (principal place of business: Kurfürsten-Anlage 52-60, 69115 Heidelberg), described in the complaint as making and importing "printer, prepress and workflow hardware and software that employ color measurement and management techniques in the U.S."

The accused technology and the patents. RAH targeted Heidelberg's Prinect workflow line — specifically the "HEI Accused Print Workflow Systems" (Prinect PDF Toolbox and Prepress Manager) and the "HEI Accused Color Products"/"HEI Accused Prinect Products" (Prinect Color Toolbox, Image Control, Press Center) — alleging that ICC profile creation from measurement data, user-selectable GCR/UCR/black-limit settings, soft-proof validation against standards, imposition, and network-shared annotation/review functionality practise the claims, with inducement premised on Heidelberg's training, integration and support materials and on knowledge dating to November 13, 2014 (Ex. 2230). The case metadata lists only U.S. Patent 7,729,008; note, however, that the complaint itself asserted five patents — the '008, 6,995,870, 8,416,444, 8,760,704 and 7,710,560 — and the '008 is the one the record identifies as the lead asserted patent (claims 28–33 and 36–38 were the asserted claims per Adobe's IPR petition). The '008, "System for Distributing and Controlling Color Reproduction at Multiple Sites" (filed June 14, 2006; issued June 1, 2010; earliest priority Feb. 26, 1996), claims a networked color-rendering system with a UI menu of user color preferences, on-screen annotation of image data, and memory storing tonal transfer curves plus color transformations derived from device-independent calibration data so that rendering matches across devices (RPX patent record). Two practical consequences of that 1996 priority date are worth flagging: RPX records the patent as expired, and the MDL court was litigating § 287 marking/notice issues over RAH's expired patents (In re RAH Color Techs., 18-md-02874-SI) — i.e., the 2019 case was effectively a back-damages action, not an injunction case.

Posture, venue, and significance. RAH filed in the N.D. Ill. on January 10, 2019, randomly assigned to Judge Edmond E. Chang (Magistrate Judge Susan E. Cox), with a jury demand and appearances by David Powers Berten, Irwin Park and Alison Aubry Richards (Justia docket, 1:19-cv-00193). The Illinois forum mattered only briefly: on January 25, 2019 the JPML issued a conditional transfer order sweeping the case into In re RAH Color Technologies LLC Patent Litigation, MDL No. 2874, before Judge Susan Yvonne Illston in the N.D. Cal., where it was docketed as 3:19-cv-00517-SI; Judge Chang vacated the February 27 status hearing and closed the Illinois docket on the transfer (Docket Nos. 10–12). In the MDL, Pretrial Order No. 2 (April 4, 2019 CMC) set Heidelberg's response for April 18, 2019, RAH's infringement contentions for the same date, Heidelberg's invalidity contentions for June 3, 2019, placed Heidelberg in claim construction segment 1 ('704, '909, '251, '260, '340) with Xerox, Kodak and EFI, stayed damages discovery, and — significantly — refused to stay cases for IPRs petitioned after 2019 absent good cause (Pretrial Order No. 2). The case is notable on four counts: (1) it was a tag-along in a six-defendant MDL wave (Adobe, Xerox, EFI, Kodak, Dalim, Heidelberg) that consolidated a decade-old individual-inventor portfolio; (2) it is IPR-linked — Adobe's IPR2019-00627 challenged '008 claims 28–33 and 36–38 over the ICC v3.0 specification, the ICC User Guide and Beretta, and the Board instituted on claims 28–30, 32–33 and 36–38, rejecting RAH's licensing-based secondary-considerations evidence as entitled to "little or no weight" (Institution Decision, IPR2019-00627); (3) it illustrates the ICC/color-management standards front of PAE assertion, where infringement and invalidity both turn on the ICC spec and industry standards participation; and (4) Heidelberg's Prinect software recurs across RAH's other suits as third-party accused technology embedded in customers' presses — the N.D. Ill. venue fight in RAH v. Quad/Graphics turned on whether Quad's Chicago office used "Heidelberg Prinect Image Control, Prinect Press Center, and Prinect Color Toolbox" (R. 70, N.D. Ill.).

Sourcing caveats

• Termination date conflicts. The metadata says the case terminated 2019-07-23 by agreement, but the public N.D. Ill. docket shows termination on 2019-01-25 pursuant to the MD

I'll research this case systematically, starting with the docket and then branching to related proceedings.

The N.D. Ill. case was quickly transferred into MDL 2874. Let me trace the transferee docket and the parallel IPRs.

Good progress. Now let me pin down the transferee docket and the dismissal, plus any appeal or license.

RAH Color Technologies LLC v. Heidelberger Druckmaschinen AG, No. 1:19-cv-00193 (N.D. Ill.)

Important framing note up front: the case as docketed in N.D. Ill. lasted only 15 days before it was pulled into MDL 2874 in the Northern District of California. Every substantive development — pleadings, infringement/Invalidity contentions, claim construction, and dismissal — occurred in the transferee court (No. 3:19-cv-00517-SI), not under Case No. 1:19-cv-00193. Additionally, the case metadata's single patent (the '008) understates the complaint, which asserted five patents.

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1. Filing and initial pleadings

2019-01-10 — Complaint filed (N.D. Ill., Dkt. 1). RAH Color Technologies LLC (Virginia LLC, solely owned by inventor Dr. Richard A. Holub) sued Heidelberger Druckmaschinen AG, the German press/prepress manufacturer, asserting five patents: U.S. 6,995,870; 7,729,008; 8,416,444; 8,760,704; and 7,710,560. Jury demand. The complaint pleaded direct infringement plus induced infringement under § 271(b) against Heidelberg's "HEI Accused" products — Prinect Prepress Manager, Prinect Color Toolbox, Prinect Image Control, and PDF Toolbox — organized as dozens of separate counts, each mapped to a single claim (e.g., '008 claims 28–33, 36–39). RAH pleaded knowledge "since at least November 13, 2014," implying a pre-suit notice/licensing approach, though I could not source the specific 2014 communication.

Counsel of record: Global IP Law Group, LLC (David Powers Berten, Alison Aubry Richards, Irwin Park) for RAH; Duane Morris LLP (Aleksander J. Goranin, Philadelphia) appeared for Heidelberg in the MDL.

Also on 2019-01-10/11: corporate disclosure statement (Dkt. 3), Notice of Claims Involving Patents (Dkt. 4), patent report mailed to the PTO (Dkt. 8), and an initial status hearing set for 2019-02-27 before Judge Edmond E. Chang (Dkt. 9).

No answer or counterclaims were ever filed in N.D. Ill. Heidelberg was never served there in any meaningful sense — summons issued 2019-01-15, and the case was transferred ten days later.

2. Transfer to MDL 2874 — the dispositive pre-trial event

• 2018-12-06: JPML ordered coordination of the RAH patent cases (Adobe, Xerox, EFI) before Judge Susan Yvonne Illston, N.D. Cal., In re RAH Color Technologies LLC Patent Litigation, No. 3:18-md-02874-SI. RAH's own complaint flagged Heidelberg as a tag-along action under MDL Rule 7.1.
• 2019-01-25: JPML issued a Conditional Transfer Order (N.D. Ill. Dkt. 12) transferring the case to N.D. Cal. Judge Chang terminated the case the same day and vacated the 2019-02-27 status hearing (Dkt. 10).
• 2019-01-28/31: Record transmitted (Dkt. 11); N.D. Cal. acknowledged receipt as No. 3:19-cv-00517, filed 2019-01-29. Dalim Software GmbH's parallel case became No. 3:19-cv-00518.
• 2019-02-22: RAH's mandatory notices in the parallel IPRs confirm Heidelberg is among the consolidated MDL cases.

This was effectively a plaintiff-driven transfer: RAH wanted the Heidelberg case consolidated with the others, and the JPML obliged over no apparent opposition. It is the reason the N.D. Ill. docket contains no motion practice at all.

3. MDL proceedings: pleadings, contentions, and scheduling

2019-04-04 — Initial case management conference before Judge Illston (transcript excerpted as Ex. 1038 in IPR2019-00646). Goranin appeared for Heidelberg "just in the Heidelberger member case."

2019-04-08 — Pretrial Order No. 2 set the MDL architecture and is the key scheduling document for Heidelberg:

• Heidelberg and Dalim to answer or otherwise respond by 2019-04-18.
• RAH to serve Patent L.R. 3-1/3-2 infringement contentions on Heidelberg by 2019-04-18.
• Heidelberg to serve invalidity contentions by 2019-06-03.
• Damages discovery stayed pending further order.
• Claim construction was bifurcated into two segments:
  • Segment 1 ('704, '909, '251, '260, '340 patents), involving Xerox, Heidelberg, Kodak, and EFI — L.R. 4-1 exchange 2019-06-18; L.R. 4-2 on 2019-07-09.
  • Segment 2 ('008, '444, '761, '897, '870 patents), all counterparties — L.R. 4-1 on 2019-07-18; opening Markman brief 2019-10-18; Markman hearing 2019-12-12.
• Preliminary technology tutorial set for 2019-05-23; a prosecution bar applied via the N.D. Cal. protective order.

Strategic significance: Heidelberg was obligated to serve invalidity contentions (due 2019-06-03) roughly seven weeks before it exited the case — i.e., RAH obtained Heidelberg's invalidity theories and prior-art positions as a matter of record before dismissal. That is the kind of asymmetric discovery outcome that often precedes a paid resolution.

4. Claim construction — did not occur as to Heidelberg

No Markman ruling issued in the Heidelberg case. Segment 1 claim construction was mid-stream (L.R. 4-2 exchange 2019-07-09) when Heidelberg was dismissed on 2019-07-23, and the '008 — the patent tracked in your case metadata — sat in Segment 2, whose L.R. 4-1 exchange did not even begin until 2019-07-18, five days before dismissal. The later N.D. Cal. claim construction order construing "sites," "appear substantially the same," and "interactive conference" in the '870 and '444 patents (CourtListener, No. 3:18-cv-03277, Dkt. 120) post-dates and does not involve Heidelberg.

5. Parallel PTAB proceedings — the '008 IPR

The IPRs were filed by Adobe, not Heidelberg, but they directly shaped the litigation:

• 2019-02-01: Adobe filed four petitions: IPR2019-00627 ('008), -00628 ('444), -00629 ('897), and -00646 ('761).
• 2019-08-20: IPR2019-00627 and -00628 instituted (claims 28–33 and 36–38 of the '008 challenged).
• 2019-09-04: IPR2019-00629 and -00646 instituted.
• 2019-09-10: Judge Illston stayed the MDL proceedings in light of the institution decisions, as to the remaining cases (Adobe, Dalim, EFI). By then Heidelberg, Kodak (dismissed 2019-05-16), and Xerox (dismissed 2019-10-15) had already left the MDL.
• 2020-05-28: Consolidated oral hearing across all four IPRs.
• 2020-08-19: Final Written Decision in IPR2019-00627 — the Board held that Adobe had not shown by a preponderance that claims 28–33 and 36–38 of the '008 are unpatentable. RAH prevailed on the '008. The win turned in part on evidentiary rulings: the Board granted RAH's motion to exclude Dr. Green's declaration (the ICC declarant refused to sit for a timely cross-examination), and struck the declaration of Adobe's lead counsel (Ex. 1074) as improper attorney argument — which left Adobe unable to authenticate the ICC v.3.0/v.3.01 specifications it relied on as prior art. Public versions issued ~2020-08-31 (Paper 124; available via Banner Witcoff).

I could not confirm whether Adobe appealed the '008 FWD to the Federal Circuit, nor the outcomes of the companion '628/'629/'646 FWDs. Treat those as open items requiring a PACER/PTAB docket check.

6. Discovery milestones

No depositions, no expert reports, and no fact discovery closed in the Heidelberg branch. The meaningful milestones were: RAH's infringement contentions (2019-04-18), Heidelberg's invalidity contentions (2019-06-03), the 2019-05-23 technology tutorial, and the stayed damages discovery. The MDL's flat stay of damages discovery (2019-04-08) deprived the case of a damages theory entirely before it settled out.

7. Trial, verdict, post-trial motions

None. No trial date was ever set for Heidelberg; no verdict, no JMOL/new-trial motions, no fee motion.

8. Final disposition

2019-07-23 — dismissed by agreement of RAH and Heidelberger in N.D. Cal. No. 3:19-cv-00517. This date is confirmed both by the metadata and independently by RAH's own recitation in its later Microsoft complaint (E.D. Tex. No. 2:20-cv-88, Compl. ¶ reciting that "the case against Heidelberger was subsequently dismissed on July 23, 2019 by agreement of the parties"), and it matches the MDL's pattern — Kodak exited 2019-05-16, Heidelberg 2019-07-23, Xerox 2019-10-15.

What I could not verify: the specific N.D. Cal. docket entry number for the stipulation of dismissal, whether dismissal was with or without prejudice, and whether it was accompanied by a license or confidentiality agreement. RAH's public statements describe only "by agreement of the parties." Given RAH's business model — its complaints boast of licenses to "12 of the largest manufacturers of color imaging and printing products" plus 13 end-user licenses — a paid license is the likely but unsourced explanation. The Docket Alarm / CourtListener docket for 3:19-cv-00517 would resolve it.

9. Present posture

Closed and final since 2019-07-23. No appeal of the Heidelberg dismissal. The '008 patent itself emerged intact from the only PTAB challenge to reach a final written decision (IPR2019-00627, 2020-08-19), and RAH went on to assert it again against Microsoft (E.D. Tex. No. 2:20-cv-88) using the Heidelberg dismissal as part of its MDL narrative.

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Chronology at a glance

Sourcing caveats

The N.D. Ill. docket (Dkts. 1–13) is well documented on Justia/UniCourt. MDL facts rest on Pretrial Order No. 2 (Ex. 2005 in IPR2019-00646), the April 4, 2019 MDL transcript (Ex. 1038), and RAH's mandatory notices (2019-02-22, 2019-04-11). The '008 FWD is well documented (IPR2019-00627 Papers 120–124; Banner Witcoff public version). The dismissal itself is the weakest-sourced link: confirmed as to date and "by agreement" via RAH's own later pleading, but without a verified docket entry, prejudice status, or settlement terms — those require a direct PACER pull of N.D. Cal. No. 3:19-cv-00517.

I'll verify and expand the plaintiff-side counsel roster, starting with the N.D. Ill. docket and firm/attorney records.

Now let me pin down the signature block and confirm whether any additional counsel appeared later in the transferee case.

Let me check the transferee docket for any additional appearances and confirm whether local counsel was retained.

Plaintiff-side counsel of record — RAH Color Technologies LLC

All three plaintiff appearances were filed on the day the complaint was lodged in N.D. Ill. (2019-01-10) and constitute the entire plaintiff-side appearance history for this case. No additional attorney appeared in the 15 days the case sat in N.D. Ill., and the same three Chicago lawyers are the ones recorded as RAH's counsel at the MDL level after transfer to No. 3:19-cv-00517-SI.

Counsel of record

Notable experience (one line each):

• Berten — Firm founder; led Global IP's work on the $4.5B Nortel patent portfolio sale, the Alcatel-Lucent $2.6B patent-secured financing, and the Kodak bankruptcy patent matters; IAM Strategy 300 since 2011, Lawdragon 500, N.D. Ill. Trial Bar; ex-Kirkland & Ellis and Bartlit Beck; runs Global IP's plaintiff-side monetization docket (Ironworks Patents, Rich Media Club, Sensory, GenghisComm).
• Richards — Harvard J.D. (2003); ex-WilmerHale, Kirkland & Ellis, and partner at Fitch Even Tabin & Flannery; N.D. Ill. Trial Bar; has argued before the Federal Circuit and won patent-owner trials at the PTAB; IAM Strategy 300; co-founder of Chicago Women in IP.
• Park — Ph.D. and USPTO-registered practitioner who served as RAH's lead PTAB counsel in the Adobe IPRs arising from the same patent family (IPR2019-00627/-628/-629/-646), where he was designated "Lead Counsel for Patent Owner" and also submitted a technical declaration filed with RAH's patent-owner preliminary responses in IPR2019-00629 and -00646.

Structural points worth flagging

• No separate local counsel. Global IP Law Group is a Chicago firm, so it served as both lead and local counsel in N.D. Ill. (the case never reached the point where local-counsel designation mattered). After transfer, Judge Illston's standing notice expressly stated that "parties are not required to obtain local counsel" (MDL No. 3:18-md-02874, Dkt. 3), and Berten was admitted to the N.D. Cal. bar while Richards and Park were granted pro hac vice on 2018-12-18 (MDL Dkts. 5–8) — before the Heidelberg member case even existed.
• No in-house counsel appeared. RAH is managed by the inventor, Dr. Richard A. Holub, but he never entered an appearance; Berten explained at the April 4, 2019 CMC that "Dr. Richard A. Holub is the inventor and the name of his company is RAH Color Technologies" (the "R-A-H" initials). Holub participated in the litigation only through Global IP.
• No substitution or withdrawal. Because the case terminated in 15 days in N.D. Ill. (and by stipulation in N.D. Cal.), there was no motion to withdraw, no substitution of counsel, and no change in the plaintiff team — an unusually clean, fixed roster.

Attorneys on RAH's service lists but not counsel of record here

Flagging these so they aren't mistaken for appearances: Ragnar Olson (USPTO-registered; rolson@giplg.com), Kristina Martin (kmartin@giplg.com), and Michael Ajay Chandra (jchandra@giplg.com) appear on Global IP's PTAB service e-mail chains for the RAH IPRs, but I found no docketed appearance by any of them in 1:19-cv-00193 or in the transferee member case. Olson was a firm "Rising Star" in the relevant period; Chandra later became a Global IP partner. I could not confirm their roles in this specific matter.

Also noted for completeness on the defense side (not the subject of this task, but relevant to reading the appearances): Aleksander J. Goranin of Duane Morris LLP (Philadelphia) appeared for Heidelberger "just in the Heidelberger member case" at the 2019-04-04 CMC — consistent with the earlier section's account.

Sourcing caveats

• The N.D. Ill. appearance entries (Dkts. 5, 6, 7) are well documented on Justia and UniCourt dockets for 1:19-cv-00193; the names, firms, addresses, and bar numbers are further corroborated by RAH's own PTAB filings (Alison A. Richards PHV declaration executed 2019-03-11 listing 1:19-cv-00193 as one of four related matters; Amended Mandatory Notices in IPR2019-00628 naming Berten and Richards as admitted pro hac vice) and by firm bios on giplg.com.
• What I could not verify: whether the N.D. Cal. member-case docket (3:19-cv-00517) contains any additional plaintiff appearance beyond these three — the UniCourt/Justia captures of that member case are thin, and the MDL master docket (3:18-md-02874) lists Berten, Park, and Richards as RAH's counsel throughout, including on the 4/30/2021 CMC minute entry (Dkt. 153). A PACER pull of 3:19-cv-00517 would close that gap, but I have no basis to suggest anyone else appeared.
• No sealed or ex parte appearance exists in this case — the docket is fully public and short (13 entries in N.D. Ill.).

I'll research defendant's counsel of record, starting with the N.D. Ill. docket and then the transferee MDL docket.

Let me pull the N.D. Cal. transferee docket and search for additional appearances.

Let me examine the MDL docket and identify which Duane Morris attorneys appeared for Heidelberg specifically.

Counsel of record for Heidelberger Druckmaschinen AG

Bottom line

Heidelberg was represented by Duane Morris LLP, and the only individual attorney whose appearance in this matter I can source is Aleksander J. Goranin, a Duane Morris partner in the firm's Philadelphia office. Critically, no defense counsel ever appeared in the N.D. Ill. docket (1:19-cv-00193) — Dkts. 5–7 are all plaintiff-side appearances, and the case was transferred 15 days after filing. All defense-side activity occurred in the transferee MDL branch, N.D. Cal. No. 3:19-cv-00517-SI, where Goranin appeared "just in the Heidelberger member case."

Confirmed appearances

Not counsel for Heidelberg (named on the MDL docket but attributable elsewhere)

The UniCourt attorney roster for the consolidated MDL docket also lists Tyler Robert Marandola, Patrick Shaw Salceda, Erika N D Stanat and William R. Leinen alongside Goranin. I could not verify that any of them entered an appearance for Heidelberg specifically; the MDL roster aggregates counsel for Adobe, Xerox, EFI, Quad/Graphics, Dalim and Heidelberg, and Duane Morris is known to have represented multiple defendants in that wave. Treat those four names as unattributed unless a PACER pull of No. 3:19-cv-00517 shows otherwise. Likewise, no local counsel for Heidelberg in the N.D. Cal. is evidenced anywhere I searched — Duane Morris has a San Francisco office, but I found no N.D. Cal. local-counsel designation, and no pro hac vice application is documented in the sources I could reach.

Explicit gaps (do not assume)

• No docket entry number for Goranin's notice of appearance in 3:19-cv-00517 is verified; the confirmation is the MDL transcript, not the ECF sheet.
• Whether Heidelberg ever filed an answer or Rule 12 motion (due 2019-04-18 per Pretrial Order No. 2) is unverified — if it did, additional Duane Morris signatories would appear.
• Who signed the 2019-07-23 stipulation of dismissal is unverified; presumptively Duane Morris, but not sourced.
• In-house counsel at Heidelberger Druckmaschinen AG (or at its U.S. affiliate, Heidelberger Druckmaschinen America, Inc.) — no appearance or identification found; nothing to report.
• No N.D. Ill. defense appearance exists at all, so the answer to the question as literally posed (counsel "in this case," No. 1:19-cv-00193) is: none appeared in Illinois; the defendant's counsel of record surfaced only after the MDL transfer. This is consistent with, and reinforces, the sourcing caveat already flagged in the case overview — the N.D. Ill. docket contains no motion practice and no defense filings.

Recommended verification path

Pull the PACER docket for N.D. Cal. No. 3:19-cv-00517-SI (Dkt. 1–~30) and check (a) the "Attorneys" tab, (b) any Notice of Appearance / Consent to Pro Hac Vice, (c) Heidelberg's corporate disclosure statement under Fed. R. Civ. P. 7.1, and (d) the stipulation of dismissal. A CourtListener RECAP query on that docket number would likely resolve all four open items in a single pass.