RAH Color Technologies LLC v. Quad/Graphics, Inc.

I'll research this case using web search, starting with the core parties and docket.

Good foundation. Now let me dig into the venue transfer opinion, the MDL, and the PTAB/IPR proceedings.

Now let me verify the IPR outcomes and check for any IPRs on the '357 patent specifically.

Case Overview

Parties. RAH Color Technologies LLC is a Virginia limited liability company with an office in Alexandria, Virginia, wholly owned and managed by Dr. Richard A. Holub, the named inventor on all of its patents. Holub holds a Ph.D. in neurophysiology and spent 1983–1994 as a color scientist/engineer at Eikonix (acquired by Eastman Kodak), Agfa/Bayer, and SuperMac, later serving on the board of the Technical Association of the Graphic Arts (TAGA) and teaching at RIT. He formed Imagicolor Corp. in 1998 to commercialize a display-calibration/soft-proofing prototype; when investment failed and Imagicolor dissolved, he formed RAH in 2005 "as a vehicle for an on-going licensing program."¹ RAH is therefore a classic individual-inventor NPE/PAE — no products, no manufacturing, revenue from licenses and settlements — but with an unusually deep technical pedigree and a portfolio the complaints claim was licensed to "12 of the largest manufacturers of color imaging and printing products."² Defendant Quad/Graphics, Inc. is the Wisconsin-domiciled commercial printing giant (Sussex, WI; the court noted it was "undisputed that Defendant Quad resides in Wisconsin"). Quad is a customer-side defendant: it was sued not for making color technology but for using it in production printing.

Accused technology. RAH's theory was that Quad's prepress and pressroom workflow infringed. Specifically, the complaint targeted Quad's use of Heidelberger Druckmaschinen's Prinect suite (Image Control, Press Center, Color Toolbox), Kodak's ColorFlow, InSite Prepress Portal and Preps Imposition, EFI's Fiery print server with Command Workstation and Color Profiler Suite, and off-the-shelf Adobe Photoshop/InDesign used by employees in Quad's Chicago office.³ The theory was that ICC-profile-based color management — AToB/BToA transformation tags, Profile Connection Space conversions, ICC v.4 Perceptual Reference Medium Gamut gamut-mapping, and device calibration to a common standard — practiced the claimed "distributed color reproduction" and color-measurement inventions. A now-dropped count also accused Quad's use of consumer digital cameras (e.g., a Sony HX300 with Exif header color-processing settings) under the '546 patent's method claim.

Patents asserted. The original complaint pleaded six patents; the First Amended Complaint (Dkt. 89, filed Mar. 15, 2018) narrowed to five — the '870, '897, '008, '704 and '357 — all sharing the specification titled "System for Distributing and Controlling Color Reproduction at Multiple Sites," except as noted:

• US 7,312,897 — networked color-management method: a user interface for selecting remote "sites" with color devices, site identity/location data, and transformation information built from device gamut relationships plus user color preferences (asserted claim 32).⁴
• US 8,537,357 — a color-measurement apparatus: illumination source, movable optics, a spectrograph calibrated to give CIE-traceable colorimetry, and programmed processors that compare readings to reference data, timestamp them in a measurement database, report grayness, and transmit results over a network (asserted claim 1).⁵
• The companion '870, '008 and '704 patents claim related distributed color-reproduction and calibration features (site-to-site color matching, stored gamut/PRMG data, interactive color conferences).

Procedural Posture and Venue

RAH first sued Quad in the Northern District of Illinois on June 30, 2017 (No. 1:17-cv-04931), before Judge Amy J. St. Eve — one of a wave of RAH suits filed in N.D. Ill. against RR Donnelley, Heidelberger, Dalim, Adobe and others. Quad moved to dismiss for improper venue under § 1400(b) and, alternatively, to transfer under § 1404(a). In a January 16, 2018 opinion (Dkt. 70), Judge St. Eve denied the Rule 12(b)(3) motion, holding that venue was proper under TC Heartland's second clause because Quad's Chicago office leased Xerox C60/C75 presses running EFI Fiery software — "regular and established place of business" plus acts of infringement — but granted § 1404(a) transfer to the Eastern District of Wisconsin, where the Heidelberg and Kodak workflows actually ran (Burlington and New Berlin, WI). The case landed in Milwaukee as 2:18-cv-00087-JPS before Judge J.P. Stadtmueller, with an aggressive schedule (dispositive motions Oct. 15, 2018; jury trial Jan. 28, 2019). It did not last: on November 29, 2018, Judge Stadtmueller adopted the parties' joint stipulation and dismissed the case with prejudice and without costs (Dkt. 142–143), mooting Quad's summary-judgment motion and RAH's motions to compel.⁶ Terms were not disclosed; the dismissal followed within roughly eight months of filing and shortly before the JPML centralized the remaining RAH cases.

Why It Matters

The Quad case is a small case that sits at the intersection of three larger stories. First, venue: it is a useful post-TC Heartland data point — a defendant with only a sales/creative office in the district was held to have a "regular and established place of business" there, yet the court still transferred to the defendant's home district because the accused toolchain was operated elsewhere, illustrating how § 1404(a) (not § 1400(b)) became the practical venue lever. Second, the RAH campaign and its IPR linkage: Quad was one defendant in a coordinated assertion program against press OEMs (Heidelberger, Kodak, EFI, Xerox, Dalim, X-Rite), software vendors (Adobe, Microsoft) and printers (Quad, RR Donnelley). The surviving cases were consolidated as In re RAH Color Technologies LLC Patent Litigation, MDL No. 2874 (N.D. Cal., Judge Susan Illston), stayed on September 10, 2019 pending PTAB review. On February 1, 2019, Adobe filed four IPRs — IPR2019-00627 ('008), -00628 ('444), -00629 ('897), -00646 ('761) — all instituted in August/September 2019, with final written decisions on August 19, 2020. The '897 patent (one of the two patents in this case) did not survive: the Board held claims 32, 33 and 37 unpatentable, whereas the '008 claims were upheld. The '357 patent, by contrast, was apparently never the subject of those IPRs. Third, market context: the patents purport to cover ICC-based, device-independent color management — the plumbing of essentially all digital color printing — which explains both why RAH could extract licenses from a dozen major manufacturers and why the industry banded together in an MDL and joint defense group. The Adobe IPRs also generated a notable ancillary discovery ruling on work-product scope during expert cross-examination (Paper 59, Dec. 12, 2019), and RAH's real-party-in-interest fight over whether Adobe petitioned on behalf of the other MDL defendants was closely watched.

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Sourcing notes and caveats

This summary is built primarily on the pleadings and docket (available via UniCourt, Justia, CourtListener and govinfo) and PTAB papers hosted at ptacts.uspto.gov, plus secondary reporting from Jones Day's PTAB blog and Docket Alarm. Specific anchors: N.D. Ill. Dkt. 70 (Jan. 16, 2018 transfer/venue opinion); Dkt. 86 (trial scheduling order); Dkt. 88–89 (leave to amend and FAC); E.D. Wis. Dkt. 143 (Nov. 29, 2018 dismissal). Patent characterizations are taken from the claim text quoted in the RAH complaints and the PTAB final written decisions.

Items I could not fully verify and would flag before publication:

• The precise settlement terms of the Quad dismissal — nothing in the record indicates whether it was a paid license, a walk-away, or a license tied to the later MDL resolutions.
• A reported F. Supp. 3d / WL citation for Judge St. Eve's January 16, 2018 opinion (I have the docket entry and full text, not a reporter cite).
• The final outcomes of IPR2019-00628 ('444) and -00646 ('761) — the '761 decision clearly addressed claim 15 and was later discussed in the MDL's claim-construction order, but I did not confirm the claim-by-claim result. Only the '008 (claims survived) and '897 (claims 32/33/37 invalidated) outcomes are confirmed here.
• Whether any IPR was ever filed against the '357 patent; none appears in the Adobe set, and I found no other petitioner, but absence of evidence is not proof.
• The metadata field "Status: unknown" in your case header is stale — the docket shows the case **closed on November 29, 201

I'll research this case systematically across dockets, court opinions, PTAB records, and legal press.

The docket shows a fast resolution. I need to verify the full docket, the transfer opinion, and the PTAB side.

Let me get the full docket detail from CourtListener/RECAP and check for any later suit against Quad.

Bottom line

This case did not go to claim construction, trial, or appeal. It was filed in the Northern District of Illinois in mid‑2017, survived a TC Heartland-era venue challenge but was transferred to the Eastern District of Wisconsin, and then was dismissed with prejudice by joint stipulation on 2018‑11‑29 — roughly eleven months after transfer and two months before the scheduled jury trial. The dismissal mooted Quad's summary-judgment motion and RAH's discovery motions. No IPR was ever filed by Quad or asserted against Quad in this case; the only PTAB proceeding touching one of these patents (the '897) came from Adobe in 2019, after this case was already over.

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Chronological developments

1. Filing — N.D. Ill. No. 1:17‑cv‑04931 (mid‑2017)
RAH Color Technologies (Dr. Richard A. Holub's licensing vehicle) sued Quad/Graphics, a Wisconsin corporation headquartered in Sussex, WI, in the Northern District of Illinois. The original complaint asserted a large group of patents from the "System for Distributing and Controlling Color Reproduction at Multiple Sites" family — U.S. 6,995,870; 7,312,897; 7,729,008; 8,760,704; 7,830,546; and 8,537,357. (complaint text; govinfo docket metadata)
Caveat: the docket entries I could retrieve start in early July 2017 (a 07/06/2017 entry); I could not pin the exact complaint date from a primary source.

2. Answer / counterclaims (2017)
I was not able to retrieve Quad's answer and counterclaims from the available sources. Given the posture (Quad moved on venue within months and later moved for summary judgment of its own), declaratory-judgment counterclaims of non‑infringement/invalidity are likely, but I cannot confirm their content or filing date, and I won't assert it. Quad's counsel of record in the docket included Jeffrey N. Costakos, Andrew M. Gross, Kevin J. Malaney, and Matthew W. Peters; RAH was represented by Irwin Park, Alison Richards, and David Berten. (UniCourt docket)

3. Venue motion and transfer — decided 2018‑01‑16 (N.D. Ill., Judge Amy J. St. Eve)
Quad moved to dismiss for improper venue under Rule 12(b)(3) and, alternatively, to transfer under §1404(a) — the natural post-TC Heartland play, since Quad "resides" only in Wisconsin. Quad submitted declarations (Sands, VP Press Operations; Forge, Exec. Director Digital Print; Collins, Technology Manager) showing that the accused functionality — Heidelberg Prinect Image Control/Press Center/Color Toolbox, EFI Fiery/Command Workstation/Color Profiler Suite, and Kodak ColorFlow/InSite/Preps — ran at Wisconsin facilities (Burlington, New Berlin), not in Illinois.
Outcome: the court denied the Rule 12(b)(3) branch, holding RAH carried its (low) burden on venue because Quad's Chicago office leased Xerox C60/C75 digital presses running EFI Fiery software — a fact established through Quad's interrogatory response and the Rule 30(b)(6) testimony of David Bontumasi — and factual conflicts are resolved in the plaintiff's favor at that stage. The court nonetheless transferred the case to E.D. Wis. under §1404(a), which took effect 2018‑01‑17, and the case was docketed as 2:18‑cv‑00087‑JPS. (R. 70 opinion, 2018‑01‑16; 9th Cir./7th Cir. venue analysis in same opinion)
Strategic note: this is a clean illustration of the post-Cray / post-TC Heartland split — a plaintiff can win the venue motion and still lose the forum, because the convenience factors pointed overwhelmingly to Wisconsin.

4. Reassignment and scheduling — Feb.–Mar. 2018
Magistrate Judge William E. Duffin was un

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

Plaintiff's counsel of record — RAH Color Technologies LLC

Bottom line: RAH's litigation team in this case came entirely from one firm — Global IP Law Group, LLC (GIPLG) of Chicago, a patent-monetization/licensing boutique that served as RAH Color Technologies' outside litigation counsel across its entire 2014–2019 campaign (Ricoh, Agfa, Fujifilm, Heidelberg, Xerox, Adobe, EFI, Kodak, Dalim, and the N.D. Cal. MDL). Three attorneys appear of record for the plaintiff; no Wisconsin local counsel and no in-house/attorney-of-record from RAH itself appears on the docket. The case closed on 11/29/2018 (settled before RAH's cases were consolidated into MDL No. 3:18-md-02874-SI), so there is no live appearance to update.

Docket support

• Dkt. 82 – RAH's Motion for Leave to File Amended Complaint (signed by Irwin Park), 3/2/2018; Dkt. 83 – Status Report (Park).
• Dkt. 87 – Reply Brief ISO Motion for Leave to Amend (RAH), 3/9/2018.
• Dkt. 88 – Order granting leave (Judge J.P. Stadtmueller, 3/14/2018).
• Dkt. 89 – First Amended Complaint with jury demand, filed 3/15/2018 by Alison Richards — this is the operative pleading naming the '870, '897, '008, '704 and '357 patents.
• Dkt. 86 – Trial Scheduling Order (3/9/2018): fact/dispositive motions 10/15/2018, trial set 1/28/2019 — never reached; case terminated 11/29/2018.
• Underlying N.D. Ill. case: RAH Color Technologies LLC v. Quad/Graphics, Inc., No. 1:17-cv-04931 (N.D. Ill., Judge Amy J. St. Eve), filed 6/30/2017, where Berten entered his appearance (7/6/2017); the case was transferred to E.D. Wis. under § 1404(a) after Judge St. Eve's venue ruling on Quad's Rule 12(b)(3)/§ 1400(b) motion (see the transfer opinion, RAH Color Techs., LLC v. Quad/Graphics, Inc., N.D. Ill., Dec. 11, 2017).

Caveats / sourcing notes

• The appearance list above is reconstructed from a PACER docket report for 2:18-cv-00087 that RAH filed as an exhibit in the PTAB (Ex. 2024, IPR2019‑00628) plus UniCourt's PACER-derived party/attorney table for the case. Both list exactly these three plaintiff attorneys (Berten, Park, Richards) and no others.
• I could not independently verify the individual pro hac vice orders for Berten and Park in the E.D. Wis. docket from the free sources available; the docket-report exhibit shows Berten's appearance date carried over from 7/6/2017 (N.D. Ill.) and Park's from 1/31/2018. Richards is affirmatively admitted to the E.D. Wis. bar (per her sworn pro hac vice declaration in IPR2021‑00421), which likely explains why GIPLG did not retain a Milwaukee firm as local counsel — but the absence of local counsel is an inference from the docket, not a documented fact.
• No in-house counsel for RAH Color Technologies appears of record. RAH is owned by Dr. Richard A. Holub (the named inventor), who is a party principal, not an attorney of record.
• Other GIPLG personnel who appear in the related RAH matters (e.g., Ragnar Olson, USPTO Reg. No. 68,865‑series; Nicholas Dudziak) do not appear on this docket in the materials I reviewed. I did not find any sealed appearances or sealed motions for leave to appear; the docket entries identified above are public.
• Defense side (for contrast, not asked): Quad/Graphics was represented by Foley & Lardner (Jeffrey N. Costakos and Kevin J. Malaney, Milwaukee; Andrew M. Gross, Chicago) and later Perkins Coie (Christopher G. Hanewicz, Madison; Steven M. Lubezny, Chicago; Andrew N. Klein and Wing H. Liang, Palo Alto).

I'll research the docket and counsel of record for Quad/Graphics in this case.

Initial results identify four defense attorneys. Let me verify against the docket and confirm firms/roles.

Counsel of Record for Quad/Graphics, Inc.

Basis and caveat: I could not pull the PACER docket sheet directly. The roster below is drawn from the Justia and UniCourt docket mirrors for E.D. Wis. No. 2:18-cv-00087-JPS (both list the same four defense attorneys), cross-checked against firm biographies, Federal Circuit and PTAB filings, and the transfer opinion from the N.D. Ill. case (No. 1:17-cv-04931, Judge Amy J. St. Eve). Nothing in the record I found indicates sealing of the appearances or counsel information.

Supporting record points

• Retention predates the suit. RAH's complaint in the N.D. Ill. action alleges that on June 22, 2016, "Jeffrey Costakos (Foley & Lardner LLP) sent counsel for RAH Color Technologies a letter informing RAH Color Technologies of his retention as outside counsel handling the matter," followed by in-person resolution meetings in Milwaukee on Sept. 14, 2016 and Jan. 24, 2017 — confirming Costakos as Quad's relationship/lead patent counsel from the pre-suit license demand onward.
• Venue defense work in the predecessor case. Quad's successful § 1400(b)/TC Heartland transfer motion in No. 1:17-cv-04931 (granted Jan. 16, 2018, Dkt. 89 in the transferred case being the First Amended Complaint filed Mar. 15, 2018 in E.D. Wis.) relied on declarations from Quad business personnel (Tim Sands, George Forge, Garrett Collins) and a Rule 30(b)(6) deponent (David Bontumasi) — i.e., the Foley team litigated venue before the merits.
• Client-side contacts (not counsel of record). Quad's General Counsel Jennifer Kent and Director of Global IP Jason Pauls corresponded with RAH's counsel (Global IP Law Group) during the 2016–17 demand period; they are in-house personnel, not attorneys of record. Quad's outside counsel in the related PTAB matters was also Foley.
• Case posture. The Quad action did not proceed to judgment: RAH's Jan. 2019 joint status report in In re RAH Color Technologies LLC Patent Litigation, M.D.L. No. 3:18-md-02874-SI (N.D. Cal.) describes the Quad case as "now settled and not part of this MDL," and notes that Adobe's counsel in the MDL had also represented Quad. The docket mirrors do not show the dismissal entry date, so the precise termination date is unconfirmed from the sources available to me.

Not found / not claimed: I did not locate any separate local counsel (E.D. Wis. admission is satisfied by Foley's Milwaukee office), any in-house attorney entering an appearance, or any second firm appearing for Quad. If a fuller PACER docket run is possible, the appearance entries (likely Dkts. 5–15 in the E.D. Wis. docket) would confirm Peters' firm and any pro hac vice designations.