RAH Color Technologies LLC v. R.R. Donnelley & Sons Co.

I'll research this case and the parties before drafting the overview.

Case Overview: RAH Color Technologies LLC v. R.R. Donnelley & Sons Co., No. 1:17-cv-00894 (N.D. Ill.)

Parties and business models. Plaintiff RAH Color Technologies LLC is a Virginia limited liability company that keeps an office at 7012 Colgate Drive, Alexandria, Virginia, and is owned and managed by Dr. Richard A. Holub, a neurophysiologist by training and the named inventor on the patents-in-suit. Per the complaint, Holub spent 1983–1994 in color-technology roles at Eikonix/Eastman Kodak, Agfa/Bayer and SuperMac, was a longtime officer and president of the Technical Association of the Graphic Arts (TAGA), taught at RIT in the mid-1990s, and contributed to early CGATS graphic-arts standards. He built a color-calibration/soft-proofing prototype, formed Imagicolor Corporation in 1998 to commercialize it, and after that venture dissolved without investment, formed RAH in 2005 expressly "as a vehicle for an on-going licensing program." (Complaint ¶¶8–19, Ex. 2227 to IPR2019-00628) So RAH is a classic inventor-owned licensing entity — not a patent-acquisition PAE and not a university — that monetizes a ~22–36 patent portfolio (the count grows across RAH's successive complaints) largely through a retained licensing agent, Global IP, which corresponded with targets such as Microsoft on RAH's behalf. Defendant R.R. Donnelley & Sons Company is a Delaware corporation with its principal place of business at 111 South Wacker Drive, Chicago — one of the largest commercial printing, labels and communications-services companies in the United States, and, critically for venue, a resident of the forum.

The accused technology. The theory is an end-user/indirect one rather than a product-on-product fight: the complaint alleges that RRD "uses printer and camera hardware and software that employ color measurement and management techniques," and uses those techniques "to set-up and print materials, and provide printing and photography services," sold to U.S. customers (Complaint ¶3). In other words, RAH targeted a large commercial printer's use of third-party color-management workflows — ICC profile/color-transformation tooling, press and proofer calibration, and soft-proofing — the same accused functionality RAH simultaneously asserted against equipment and software makers (Adobe, EFI, Xerox, Kodak, Heidelberg, Dalim) and other printers (e.g., Quad/Graphics). Practically, the RRD suit applied pressure at the customer layer of the color-management supply chain, which is what eventually drove the manufacturers' declaratory-judgment actions and MDL consolidation discussed below.

Patents asserted — and an important record discrepancy. The case metadata records only U.S. Patent 7,729,008, but the complaint as filed on February 2, 2017 asserted seven patents: U.S. Patent Nos. 6,995,870; 7,312,897; 7,729,008; 8,760,704; 7,830,546; 8,817,314; and 8,537,357 (Complaint ¶ at 1). I could not retrieve a docket entry or amended infringement contention showing which patents survived narrowing, so the single-patent metadata should be treated as unverified; the '008 was clearly the lead assertion in RAH's campaign and is the one I can substantiate here. One-line technical sketch: the '008 patent, "System for Distributing and Controlling Color Reproduction at Multiple Sites" (filed June 14, 2006; issued June 1, 2010; earliest priority Feb. 26, 1996; now expired for failure to pay maintenance fees per RPX), claims a networked color-rendering system in which a computer with a GUI lets a user select color-reproduction preferences and annotate color image data, and memory stores tonal transfer curves plus color transformations derived from calibration data in device-independent units of color, with certain claims (e.g., claim 28) requiring a chromatic adaptation transform to compensate for viewing-condition changes. (claim text, RPX Insight; IPR2019-00627 petition) The six sibling patents are continuations in the same family, sharing that title (e.g., '870, '897, '704, '546, '314, '357), which is why RAH could assert a family of near-identical specifications against one defendant.

Procedural posture and why the venue mattered. Filed February 2, 2017 in the U.S. District Court for the Northern District of Illinois (Eastern Division) with a jury demand, and docketed as 1:17-cv-00894 (RPX docket record; complaint header). The N.D. Ill. choice was essentially venue-proofing: RAH is a Virginia company, but it sued in RRD's home district, so RRD "resides" there under 28 U.S.C. § 1400(b) and could not knock the case out on TC Heartland grounds — a notable contrast with RAH's E.D. Tex. and N.D. Cal. cases, where Adobe successfully moved to transfer. I could not verify the presiding judge or confirm whether this particular case was swept into MDL No. 2874 — In re RAH Color Technologies LLC Patent Litigation, N.D. Cal. Case No. 3:18-md-02874-SI (Judge Susan Illston) — which centralized the Adobe, Xerox, EFI, Kodak, Dalim and Heidelberger actions (the JPML's CTO-1 papers list a different N.D. Ill. RAH case, No. 1:17-cv-06813, not 00894) (Pretrial Order #1; IPR2019-00627 petition). The competing N.D. Ill. RAH cases went to Judges Edmond E. Chang (Heidelberg) and Thomas M. Durkin/Ronald A. Guzman (Dalim) before transfer (Justia dockets). The MDL has since been closed.

Why it's notable. Three reasons. First, it is a window into the tail end of a two-decade inventor-licensing campaign: RAH's patents claim 1996 priority and the '008 has expired for non-payment of maintenance fees, so the RRD suit — like its siblings — was fighting over a shrinking damages window rather than injunctive relief. Second, it illustrates the "sue the customer" enforcement pattern in graphic arts: by asserting color-management patents against printers and prepress shops, RAH pulled the equipment and software vendors (Adobe, EFI, Heidelberg, Dalim, Xerox, Kodak) into the dispute, producing DJ actions, a rare multi-district patent MDL, and coordinated inter partes reviews — Adobe filed IPR2019-00627 challenging claims 28–33 and 36–38 of the '008, alongside IPR2019-00628 ('444), IPR2019-00629 ('897) and IPR2019-00646 ('761), with institution granted at least in the '761 proceeding (institution decision). Third, the market context is a consolidating commercial-print sector (RRD, Quad/Graphics) in which variable-data and color-managed digital workflows — precisely the technology Holub patented in the mid-1990s — became table stakes, making printer-side licensing demands cheap to assert and expensive to litigate.

Candid sourcing caveats. (1) I could not access a PACER/RECAP docket sheet for 1:17-cv-00894 in this research pass, so the case's outcome, termination date, presiding judge, and any settlement/license are unverified — the only docket-level facts I can ground are the filing date, court, case number and the complaint's contents. Do not report an outcome without pulling the docket. (2) The complaint asserts seven patents while the case metadata lists only the '008; treat the metadata as a possible post-narrowing artifact. (3) The '008 final written decision in IPR2019-00627 is likewise unverified here. (4) RRD's 2022 take-private by Chatham Asset Management is widely reported but was not confirmed by search in this session, so I have not relied on it.

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

Let me pull the docket and track what happened to this specific case.

Scope note and confidence flags

Before the chronology, two housekeeping points that materially affect the analysis:

1. Patent count discrepancy. The case metadata lists only the ’008 patent. The actual complaint (Dkt. 1, filed 2017‑02‑02) asserted seven patents: U.S. 6,995,870; 7,312,897; 7,729,008; 8,760,704; 7,830,546; 8,817,314; and 8,537,357, all titled (or in the same family as) “System for Distributing and Controlling Color Reproduction at Multiple Sites.” I treat the ’008 as the metadata‑designated patent of interest but describe the case as pleaded, since that affects the PTAB picture.
2. What I could and could not retrieve. I confirmed the complaint text and the case’s absence from the MDL 2874 case list. I was unable, within this session, to pull the full CM/ECF docket sheet for 1:17‑cv‑00894 (CourtListener/RECAP and RPX pages exist but the docket entries did not render in retrievable form). Everything below is labeled [VERIFIED], [INFERENCE], or [UNVERIFIED] accordingly. I will not invent docket numbers, judges, or dismissal dates.

---

1. Filing and initial pleadings

2017‑02‑02 — Complaint filed. [VERIFIED]

• RAH Color Technologies LLC v. R.R. Donnelley & Sons Co., No. 1:17‑cv‑00894 (N.D. Ill.), Dkt. 1, 43 pages, jury demand.
• Plaintiff: RAH Color Technologies LLC, a Virginia LLC, managed by Dr. Richard A. Holub, sole inventor/principal; Alexandria, VA address.
• Defendant: R.R. Donnelley & Sons Co., a Delaware corporation with principal place of business at 111 South Wacker Drive, Chicago, Illinois — squarely within the Northern District of Illinois.
• Theory: RRD “uses printer and camera hardware and software that employ color measurement and management techniques,” and uses those techniques to set up and print materials and provide printing/photography services sold in the U.S. — i.e., a direct/inducement user-and-beneficiary theory against a commercial printer, not against a hardware OEM. The complaint contains claim‑chart counts mapping specific claims (e.g., ’870 claim 34, ’008 claims 31/33/36, ’546 claim 26) onto accused print-workflow systems.
• Damages posture: RAH’s later MDL filings describe a licensing program of ~27–30 licensees with an average license value under $1 million, and RAH repeatedly proposed one‑day arbitration and stipulated damages to keep costs proportional. That framing almost certainly drove this early-2017 wave of printer-defendant suits.

Answer, counterclaims. [UNVERIFIED] — I could not retrieve RRD’s answer or any declaratory‑judgment counterclaims for invalidity/non‑infringement. Given RRD’s Chicago HQ and the patentee‑friendly pre-TC Heartland framing (and, by 2017‑02, post-TC Heartland still comfortably proper because RRD resides in‑district), no venue fight was realistically available.

2. Pre-trial motions of substance

• Motion to transfer (§1404(a)): none expected and none identified. [INFERENCE] Contrast the companion cases: Adobe moved to transfer its N.D. Ill. case to N.D. Cal. (granted) and Quad/Graphics moved under Rule 12(b)(3)/§1400(b) to dismiss or transfer to Wisconsin (denied on venue, in an opinion denying the Rule 12(b)(3) motion and weighing §1404(a)). RRD could not make that argument — its headquarters and records were in Chicago.
• Motion to dismiss on the pleadings: [UNVERIFIED] — no §101 or Rule 12(b)(6) ruling identified.
• Stay pending IPR: not applicable in time. [INFERENCE] The first Adobe IPR petitions on the RAH patents were not filed until 2019‑02‑01, roughly two years after this case was filed; the MDL‑wide stay came 2019‑09‑10. This case appears to have left the docket well before either date (see §6).

3. Claim construction (Markman)

No Markman proceeding in this case. [INFERENCE — high confidence]
Nothing in the record I retrieved shows a claim construction order, Markman hearing, or joint CCI/patent L.R. 4.1 exchange in No. 1:17‑cv‑00894. Claim construction in the RAH campaign occurred elsewhere and later: Judge Susan Illston’s order in In re RAH Color Technologies LLC Patent Litigation, No. 3:18‑md‑02874‑SI (N.D. Cal.), filed 2021‑01‑22 (Dkt. 120 in No. 3:18‑cv‑03277), construing “sites” (’870/’444), “appear substantially the same” (’870), and “interactive conference” (’444), and expressly noting that “none of the PTAB decisions construed any of these claim terms.” The ’008 was not among the terms construed in that order. [VERIFIED as to the MDL order; the absence of Markman in the RRD case is an inference from the record retrieved.]

4. Discovery milestones

None documented for this case. [UNVERIFIED] I found no scheduling order, protective order, ESI protocol, 30(b)(6) deposition, or source‑code production specific to RRD. The strategically significant discovery in the campaign happened in the other N.D. Ill. cases — notably RAH’s use of Quad’s interrogatory responses and Rule 30(b)(6) testimony (deponent David Bontumasi) about Xerox C60/C75 presses running EFI Fiery to establish venue — and later in the MDL. If RRD-specific discovery exists, it would be in the Dkt. 20–60 range; that is a gap to fill from PACER.

5. Trial, verdict, post-trial motions

No trial, no verdict, no JMOL/new‑trial/fee motions. [INFERENCE — high confidence] No trial or merits ruling in this action appears anywhere in the RAH record; the ’008’s substantive rulings came out of the PTAB and the N.D. Cal. MDL, not this case.

6. Disposition / final posture

Not verified. The case appears to have terminated before December 2018, most likely by settlement/license and voluntary dismissal. [INFERENCE — strong circumstantial]

The inference rests on two documented facts:

• Judge Illston’s Pretrial Order #1 in MDL No. 2874 (N.D. Cal., Case No. 18‑md‑02874‑SI) describes the MDL as covering “nine related patents” and lists the transferred actions: RAH v. Adobe, RAH v. Xerox, Electronics For Imaging v. RAH, plus later tag‑alongs RAH v. Kodak, RAH v. Heidelberger, RAH v. Dalim, and RAH v. Quad/Graphics. RR Donnelley is not on that list.
• RAH’s Mandatory Notices in IPR2019‑00627 (filed 2019‑02‑22), listing “[t]he ’008 Patent is at issue in the following lawsuits,” enumerates Adobe (N.D. Cal.), EFI (E.D. Va.), Dalim (N.D. Ill.), Kodak (W.D.N.Y.), Heidelberger (N.D. Ill.), and Xerox (W.D.N.Y.) — again, no RR Donnelley.

Since RAH was meticulous about listing every ’008 suit in its PTAB mandatory notices (a duty under 37 C.F.R. §42.8(a)(2)), RRD’s absence means the RRD action was no longer pending as of 2019‑02‑22, and its absence from the MDL (created 2018‑12‑06) means it was almost certainly closed before December 2018. RAH’s settlement pattern in this campaign was dismissal by agreement after a paid license (e.g., Kodak dismissed 2019‑05‑16, Heidelberger 2019‑07‑23, Xerox 2019‑10‑15, all “by agreement of the parties”). The most probable disposition for RRD is the same: confidential license plus stipulated dismissal with prejudice, sometime in 2017–2018. The specific dismissal date and Dkt. number are unverified and should be pulled from the docket (search CM/ECF for a Fed. R. Civ. P. 41(a) stipulation).

No appeal of this action.

7. Parallel PTAB proceedings on the ’008 and their effect

[VERIFIED as set out below]

• Source for petition/institution dates: RAH’s own recitation in RAH Color Technologies LLC v. Microsoft Corp., No. 2:20‑cv‑00088 (E.D. Tex.), Complaint ¶¶ MDL history.
• 2019‑09‑10: Judge Illston granted a motion to stay the MDL proceedings in light of the institutions, as to the then‑remaining cases (Adobe, Dalim, EFI). [VERIFIED via the Microsoft complaint’s recital; independently corroborated by the ’008 IPR docket materials.]
• Final written decisions issued in the 2020 cycle and fed directly back into the MDL: Judge Illston’s 2021‑01‑22 claim construction order is framed around “the ’761 Patent Final Written Decision with regard to the finding about claim 15” and notes that no FWD had construed the disputed ’870/’444 terms. The precise claim‑by‑claim outcomes of IPR2019‑00627 on the ’008 are not verified in this session — that is the single most important item to confirm, because an adverse ’008 FWD would have materially discounted every remaining RAH case (including any residual RRD exposure) and would explain the settlement-wave timing.

Effect on the RRD litigation: essentially none. Because the RRD case appears to have resolved

I'll research the counsel of record for RAH Color Technologies in this case.

Let me pull the complaint's signature block and the docket sheet.

Bottom line

RAH Color Technologies was represented in this case by its long-time outside patent litigation boutique, Global IP Law Group, LLC (GIPLG) of Chicago. GIPLG has been RAH's counsel of record in essentially every RAH enforcement action since roughly 2015, so the roster below is reconstructed from the complaint filed in this case plus the dockets and filings in RAH's contemporaneous cases and PTAB proceedings.

Caveat on verification: I could not retrieve the actual appearance entries (Dkt. Nos. 2–10 or so) from the 1:17-cv-00894 docket. The RPX Empower docket page (https://litigation.rpxcorp.com/litigation/ilndce-[336239](/patent/336239)-rah-color-technologies-v-r-r-donnelley-sons-company) and CourtListener RECAP entry returned only summary metadata, and the complaint PDF circulating as an IPR exhibit reproduces the body text but not the signature block (https://www.docketalarm.com/cases/PTAB/IPR2019-00628/Adobe_Inc._v._RAH_Color_Technologies_LLC/docs/12-13-2019-Patent_Owner/Exhibit-2227-Exhibit_2227__Complaint__RR_Donnelley.pdf). The specific attorneys who entered appearances in this case are therefore an inference from firm-level and companion-case records, not something I confirmed docket-entry by docket-entry.

---

Plaintiff's counsel

Sources for the above:

• N.D. Cal. docket for 3:18-cv-03277 reproduced in IPR2019-00628, Ex. 2024 (listing Berten as "LEAD ATTORNEY" and Park and Richards for RAH): https://www.docketalarm.com/cases/PTAB/IPR2019-00628/Inter_Partes_Review_of_U.S._Pat._8416444/docs/05-21-2019-Patent_Owner/Exhibit-2024-65-Exhibit_2024_Adobe_Quad_Dalim_Attorneys.pdf
• Berten pro hac vice declaration (IPR2019-00629), listing his role and RAH's related cases: https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1523317](/patent/1523317)/download-documents?artifactId=F4sIGkrqFu6fe9dcnOd3TpdcMpq9CnicoqzW09DEjfQL43hKOOK6Il0
• Richards pro hac vice declaration (IPR2019-00628): https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1523316](/patent/1523316)/download-documents?artifactId=6lZetHR9Pv3XfrRK9-c2oiLACMwWSrlQqh-5gjHirOU0B5qzn_LqZtY
• RAH's amended mandatory notices naming Park as Lead Counsel and Olson as back-up: https://ptacts.uspto.gov/ptacts/public-informations/petitions/1523317/download-documents?artifactId=Rk0Ng0WEHsk4jAbU4Oolhq1E_AfKNoxKNd11kD23cSTzcjSylEbDTWE

---

Notes and open items

• No local counsel identified. GIPLG is itself Chicago-based, which is consistent with RAH not needing N.D. Ill. local counsel in this case (contrast the N.D. Cal. and E.D. Va. matters, where California counsel such as Randall G. Block of Burke, Williams & Sorensen appeared locally).
• In-house / party representative: Dr. Richard A. Holub owns and "manages" RAH Color Technologies and is the named inventor of the '008 patent (Complaint ¶ 1). He is a party principal, not an attorney of record, and I found no indication he entered an appearance.
• Do not confuse with defense counsel. A Law360 attorney page for James L. Davis, Jr. of Ropes & Gray lists this case (https://www.law360.com/firms/ropes-gray/attorneys/james-l-davis-jr). That is consistent with Ropes & Gray representing R.R. Donnelley (the defendant), not RAH, but I have not independently confirmed the entry of appearance, so treat it as defense-side and unverified.
• Sealing: Nothing in the materials I retrieved indicates the appearances or the complaint in this case were sealed. My gap is tooling/access to the docket, not a sealing order.
• Status inference (flag as unverified): The case does not appear among the tag-along actions later collected into In re RAH Color Technologies LLC Patent Litigation, No. 3:18-md-02874-SI (N.D. Cal.), which suggests it was resolved (likely dismissed after license/settlement) before the MDL formed in late 2018. I did not confirm the terminating docket entry, and the existing case summary's "outcome not verified" stands.

If you can supply PACER access or a docket-sheet PDF, I can confirm the exact appearance dates and any pro hac vice orders for Berten, Park and Richards in 1:17-cv-00894.

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

Let me look at the docket itself via CourtListener/RECAP and search for defense counsel appearances.