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

I'll research this case and its context.

Case Overview

Parties. Plaintiff RAH Color Technologies LLC is a Virginia limited liability company operating out of an Alexandria, Virginia address; it is the patent-holding vehicle of Dr. Richard A. Holub, a Ph.D. neurophysiologist and former Kodak/Eikonix, Agfa/Bayer and SuperMac color scientist who is the named inventor on the asserted patents. Per the complaint, Holub prototyped a networked color-calibration/soft-proofing system in the mid-1990s, formed Imagicolor Corporation in 1998 to commercialize it, and — after that venture failed to raise investment and dissolved — formed RAH in 2005 "as a vehicle for an on-going licensing program for companies whose products depend on Dr. Holub's innovations" (Compl., Dkt. 1 ¶¶ 8–20, reproduced as IPR2019-00628 Ex. 2227). RAH is therefore a classic licensing-and-assertion entity with an inventor-principal rather than an operating business; in the parallel MDL it described itself as having signed 27 licenses averaging under $1 million each (In re RAH Color Techs. LLC Patent Litig., MDL No. 2874, Dkt. 46, Joint Status Report at 2). Defendant R.R. Donnelley & Sons Company is a Delaware corporation headquartered at 111 South Wacker Drive, Chicago — one of North America's largest commercial printing, premedia and print-supply-chain companies (Dkt. 1 ¶ 2).

Accused technology. The RRD complaint is notably thin on product identification. Rather than naming software, RAH alleged generally that RRD "uses printer and camera hardware and software that employ color measurement and management techniques in the U.S." and uses those techniques "to set-up and print materials, and provide printing and photography services" sold to U.S. customers (Dkt. 1 ¶ 3). In the essentially contemporaneous companion suit against Quad/Graphics, RAH's theory was that a commercial printer infringes by using third-party color-management software — EFI Fiery/Command Workstation/Color Profiler Suite, Kodak ColorFlow/InSite/Prinergy, and Heidelberg Prinect Image Control/Press Center/Color Toolbox — in its prepress and press workflows (see RAH Color Techs., LLC v. Quad/Graphics, Inc., No. 17 C 4931, 2018 WL 405193 (N.D. Ill. Jan. 16, 2018) (St. Eve, J.), describing the accused EFI, Kodak and Heidelberg software). The same end-user theory presumably applied to RRD, but I could not locate a public claim chart or infringement contentions identifying the specific RRD-branded or third-party products at issue, so that detail should be treated as unverified.

Patents asserted. The metadata supplied for this case lists only US 8,537,357 and US 7,312,897, but the complaint as filed asserts seven patents: US 6,995,870, 7,312,897, 7,729,008, 8,760,704, 7,830,546, 8,817,314 and 8,537,357 (Dkt. 1 ¶ 1). All seven share the title "System for Distributing and Controlling Color Reproduction at Multiple Sites" and descend from a common priority chain dating to August 25, 1997 (via US 6,043,909). Technical sketches: the '897 patent (issued Dec. 25, 2007) claims a network of "sites"/nodes, each with a rendering device (proofing display, proofer, or production press) and a color measurement instrument, exchanging color data so that colors reproduced at different devices "appear substantially the same" within each device's attainable gamut; the '357 patent (issued Sept. 17, 2013, as a division of application 12/660,937) is directed to the measurement/instrumentation side of that system — non-contact, self-calibrating color measurement of displays and printed sheets (e.g., a sensor coupled to a transport mechanism feeding light to a spectrograph), as reflected in the specification of its sibling US 8,917,394 and the '870/'444 claim-construction record in MDL 2874.

Posture and Why It Matters

The suit was filed February 2, 2017 in the U.S. District Court for the Northern District of Illinois, Eastern Division, and jury-demanded (Dkt. 1). Venue was not seriously contestable: although TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017) (decided three months later) meant RRD "resides" only in Delaware, RRD's Chicago headquarters plainly satisfied the second prong of 28 U.S.C. § 1400(b) as a "regular and established place of business" — the same analysis that let RAH defeat a venue challenge in Quad/Graphics before Judge St. Eve, even as the court there exercised § 1404(a) discretion to transfer to the Eastern District of Wisconsin. The assigned judge in 1:17-cv-00894 is not confirmed by any source I retrieved; the related N.D. Ill. RAH matters were handled by Judges St. Eve (Quad) and Matthew F. Kennelly (Adobe, on transfer), so a St. Eve assignment is plausible but unverified.

The case is best understood as one tile in RAH's 2016–2020 campaign to monetize the Holub portfolio across the entire color-management value chain, in two tiers: (i) hardware/software manufacturers — Ricoh, Seiko Epson, X-Rite, Adobe, Xerox, EFI, Kodak, Dalim, Heidelberger Druckmaschinen, Microsoft (E.D. Tex. 2:20-cv-00088) — and (ii) downstream users such as RRD and Quad/Graphics, the two largest commercial printers in the United States. That user-tier strategy, premised on § 271(a) "use" of third-party software, drew an immediate venue/transfer counterattack and, from the manufacturer tier, a PTAB counterattack: Adobe filed IPRs against the '008, '444 and '761 patents (IPR2019-00627, -00628, -00629, -00646), and the RRD complaint itself was submitted as an exhibit in those proceedings. Six of the parallel cases were consolidated as In re RAH Color Technologies LLC Patent Litigation, MDL No. 2874 (N.D. Cal., Judge Susan Illston), which has since been closed by final judgment (MDL Dkt. 52–53). Notably, RRD was not among the cases listed as transferred into MDL 2874 in RAH's later mandatory notices (which list Adobe, EFI, Xerox, Kodak, Dalim and Heidelberger), suggesting it resolved or was otherwise concluded outside the MDL — but the terminal disposition of 1:17-cv-00894 is not confirmed in any source I could retrieve. I found no public dismissal order, settlement announcement, transfer order, or judgment, and therefore cannot state whether RRD took a license, prevailed, or the case was dismissed by stipulation. Anyone needing that fact should pull the N.D. Ill. docket directly through PACER; the RPX litigation profile (litigation.rpxcorp.com/litigation/ilndce-336239) is the best free starting point for the docket sheet.

I'll research the litigation timeline and disposition, starting with the docket and any public orders.

Let me try CourtListener's RECAP docket directly and search for any orders.

Sourcing posture, up front

This is the section where the record runs out. Unlike the pleadings and counsel questions, the procedural history of N.D. Ill. No. 1:17-cv-00894 is not publicly reconstructible from free sources, and I want to be precise about what that does and does not mean.

[Verified] = confirmed in a document I retrieved. [Inference] = reasoned from verified adjacent facts, not from this docket. [Unknown] = no retrieved source establishes it, and I decline to guess.

The single most important verified fact about this case's trajectory is a negative one: the JPML's conditional transfer orders in MDL 2874 list the RAH cases being centralized, and 1:17-cv-00894 is not among them. The November 2018 hearing order and the January 2019 CTO-1 name ILN/1:17-cv-06813 (the Xerox case) as the Northern District of Illinois action pulled into the MDL — not the Donnelley case (JPML MDL 2874 docket, Dkt. 10, 44, 46). Donnelley was also absent from RAH's later mandatory notices cataloguing "the four other cases" and six related matters in the Adobe IPRs, which do list Xerox, EFI, Heidelberger, Dalim, Kodak and Adobe (IPR2019-00627 Final Written Decision, Paper 124, at 2–3). Together with the fact that the only filing indexed anywhere for this case is Dkt. 1 (the complaint), these are strong circumstantial signals that 1:17-cv-00894 ended early and quietly — but they are signals, not an order.

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Chronological development of the litigation

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What is documented as not having happened in this case

I found no trace of any of the following in 00894, and given that RAH litigated the identical patents to summary judgment, Markman and appeal in the MDL, the silence is meaningful:

• No motion to dismiss or transfer. RRD's Chicago headquarters at 111 S. Wacker Drive made both personal jurisdiction and § 1400(b) venue unassailable, and TC Heartland (decided 2017-05-22, three months post-filing) could not help a defendant sued at home. Contrast Quad, which fought venue and won a § 1404(a) transfer. RRD had no comparable lever, and none was pulled.
• No stay pending IPR. Even if RRD had sought one, the Adobe petitions were not filed until January/February 2019 — two years after this complaint — and none of them targeted the '357 patent at all.
• No Markman, no summary judgment, no trial, no JMOL/new-trial/fee motion, no appeal. No RAH opinion, verdict report, or Federal Circuit docket exists for this case in any source I could reach.

The absence of every one of these is consistent with a case that never got past the pleadings.

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The likely disposition — stated as inference, not fact

Three verified facts, read together, point to an early negotiated resolution (license) or voluntary dismissal within roughly the first year:

1. Docket Alarm's index contains only Dkt. 1 — no answer, no scheduling order, no Rule 26(f) report.
2. The JPML did not sweep 00894 into MDL 2874 in 2018, even though it swept the contemporaneous Xerox N.D. Ill. case (1:17-cv-06813) and the later Heidelberger/Dalim N.D. Ill. cases. A case already closed or on the verge of closing would not be a transfer candidate.
3. RRD disappears from RAH's own catalogue of its live litigations in the 2019 PTAB filings.

RRD's absence from the MDL is the strongest single indicator, but note the alternative explanation: a case could have been omitted from the MDL because RRD was never served, or because the case was administratively closed/stayed. I could not rule those out. The one thing I can affirmatively rule out is any suggestion that 00894 was transferred into MDL 2874 — it was not.

Do not state as fact that RRD took a license. RAH has never publicly announced an RRD license, RRD's SEC disclosures have not been checked for this case, and the docket has not been pulled. If a license exists, it is probably confidential under the same pattern RAH used elsewhere (its MDL status report described 27 licenses averaging under $1 million, without naming licensees).

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Parallel PTAB proceedings and their effect here

This is where the analysis gets interesting, because **one of the two patents the case metadata lists — US 7,312,897

I'll research the counsel of record for RAH Color Technologies in this case, starting with docket and opinion sources.

Let me pull the actual complaint signature block and the docket entries for this specific case.

Now let me pull the specific docket sheet and the complaint's signature block.

Sourcing caveat, up front

I was able to verify the complaint in this case (N.D. Ill. No. 1:17-cv-00894, Doc. #1, filed 02/02/2017) and the identity of RAH Color Technologies' litigation team across the related RAH cases and the parallel Adobe IPRs, but I was not able to retrieve the actual N.D. Ill. docket sheet (attorney-appearance entries, ECF Nos. ~2–10) for this case file. No filing appears to be sealed — the gap is a retrieval limitation, not a sealing issue. Everything below is labeled accordingly: [Verified] = confirmed in a document or docket I saw; [Inferred] = strongly supported by the same plaintiff's counsel appearing in RAH's contemporaneous cases, but not confirmed against the 00894 docket itself.

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Counsel of record for Plaintiff RAH Color Technologies LLC

1. David P. Berten — Lead counsel [Inferred for 00894; verified as RAH's lead counsel generally]

• Firm / office: Global IP Law Group, LLC — 55 W. Monroe Street, Suite 3400, Chicago, IL 60603. Tel. (312) 241-1502; dberten@giplg.com.
• Experience note: Described himself in a sworn pro hac vice affidavit as a partner with "over 28 years of patent litigation experience" and a litigator in "over 25 patent infringement cases"; admitted in N.D. Ill., N.D. Cal., W.D. Wis., D. Colo., W.D./E.D. Mich., E.D. Wis., the Federal, Third and Seventh Circuits, and the U.S. Supreme Court. He identified himself as lead counsel for RAH in six related matters, including RAH v. Adobe (N.D. Cal. 3:18-cv-03277), RAH v. Dalim (N.D. Ill. 1:19-cv-00275), RAH v. Kodak (W.D.N.Y. 6:19-cv-06112), RAH v. Xerox (W.D.N.Y. 6:18-cv-06746), and the MDL In re RAH Color Technologies LLC Patent Litigation (N.D. Cal. 3:18-md-02874-SI). [Verified — Declaration of David P. Berten, IPR2019-00629 (Mar. 11, 2019), via ptacts.uspto.gov]

2. Alison A. Richards — Of counsel / case attorney [Inferred for 00894; verified in related RAH cases]

• Firm / office: Global IP Law Group, LLC — 55 W. Monroe Street, Suite 3400, Chicago, IL 60603. Tel. (312) 241-1505; arichards@giplg.com.
• Experience note: Filed the RAH v. Dalim complaint and related Rule 7.1/patent notices in N.D. Ill. in January 2019 and was admitted pro hac vice in the N.D. Cal. MDL (Dkt. Nos. 5, 7). Listed in RAH's mandatory notices in the Adobe IPRs as a Patent Owner attorney. Notably, she is the ECF filer on RAH's N.D. Ill. pleadings, which makes her appearance in the 00894 docket highly probable. [Verified in related matters — UniCourt docket for 1:19-cv-00275; PTAB mandatory notices, IPR2019 series]

3. Irwin Park — Of counsel [Inferred for 00894; verified in related RAH matters]

• Firm / office: Global IP Law Group, LLC — 55 W. Monroe Street, Suite 3400, Chicago, IL 60603. Tel. (312) 241-1500; ipark@giplg.com.
• Experience note: Appeared for RAH in RAH v. Adobe (N.D. Cal.), where he was granted pro hac vice admission by Judge Illston (Dkt. No. 8, Dec. 18, 2018), and handled RAH's opposition to Adobe's motion to amend invalidity contentions (Dkt. No. 146, Feb. 19, 2021). Also listed on RAH's PTAB filings. [Verified in related matters]

4. Meagan C. Leslie — Associate / case attorney [Inferred for 00894; verified in related RAH matter]

• Firm / office: Global IP Law Group, LLC, Chicago, IL.
• Experience note: Filed a notice of appearance for RAH in RAH v. Dalim Software GmbH, N.D. Ill. No. 1:19-cv-00275 (Dkt. No. 11, Jan. 16, 2019) and is listed among RAH's attorneys in the MDL. Junior role; no standalone notable patent cases identified. [Verified in related matter — UniCourt docket]

5. Randall G. Block — Local counsel (California only) [Verified in Adobe case; NOT confirmed for 00894]

• Firm / office: Burke, Williams & Sorensen, LLP — 101 Howard Street, Suite 400, San Francisco, CA 94105. Tel. (415) 655-8100; rblock@bwslaw.com.
• Experience note: Appeared for RAH in RAH v. Adobe in N.D. Cal. (assigned 08/13/2018) — that court does not require local counsel, so he functioned as local/support counsel in that forum. There is no indication he appeared in the Illinois RR Donnelley case, since Global IP is itself a Chicago firm and does not need local counsel in N.D. Ill. [Verified in related matter only — N.D. Cal. docket extract reproduced in IPR Exhibit 2024]

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Useful context on the plaintiff's side

• No in-house counsel. RAH Color Technologies is a Virginia LLC run by Dr. Richard A. Holub from 7012 Colgate Drive, Alexandria, VA 22307; the complaint describes Holub as the company's manager and the inventor of all asserted patents. Litigation is outsourced entirely to Global IP Law Group. [Verified — Compl. ¶¶ 1, 8]
• Counsel's pre-suit role. Global IP Law Group was also RAH's licensing/enforcement counsel before suit — it sent the 2014–2016 notice letters and claim charts to Xerox and Kodak that RAH later used for willfulness/knowledge allegations, including a February 9, 2017 letter expressly notifying Xerox that "a suit had been filed against R.R. Donnelley & Sons." [Verified — RAH complaints against Xerox and Kodak, via RPX Insight]
• Earlier/historical RAH counsel (not counsel in this case): Niro, Scavone, Haller & Niro, and the Merzbach Law Office, who handled RAH's 2002–2008 outreach to Kodak. Do not confuse these with the 2017 Donnelley team. [Verified — RAH v. Kodak complaint, W.D.N.Y. 6:19-cv-06112, ¶¶ 25–30]

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What I could not verify — flagged honestly

1. No confirmed docket-sheet appearances for No. 1:17-cv-00894. I could not open the N.D. Ill. docket for this case (RPX Empower and Docket Alarm returned only the complaint PDF and metadata, not the appearance entries). The identification of Berten/Richards/Park/Leslie as counsel here rests on (a) the complaint being a Global IP Law Group filing, and (b) the same four attorneys being RAH's registered counsel in RAH's other 2017–2019 cases during the identical period.
2. No pro hac vice designations to report. Because Global IP is Chicago-based and all of its named attorneys appear to hold Illinois bar membership, the 00894 docket likely contains straight "ATTORNEY Appearance" entries (N.D. Ill. form) rather than PHV motions — but I have not confirmed that.
3. Terminal disposition unknown. Consistent with the existing case summary, I found no dismissal order, settlement, or transfer order for 00894. (RR Donnelley's own later Chapter 11 filing in 2020 is a separate matter and I have no evidence linking it to this case's disposition.)
4. Next step to close the gap: pull the PACER docket for 1:17-cv-00894, ECF Nos. 2–15, which will show the exact "ATTORNEY Appearance" entries and the assigned district judge.

Key sources: Complaint, RAH Color Techs. LLC v. R.R. Donnelley & Sons Co., No. 1:17-cv-00894 (N.D. Ill. Feb. 2, 2017), Dkt. 1 (reproduced as Ex. 2227 in IPR2019-00628) — 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; Berten PHV Declaration, IPR2019-00629 — https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1523317](/patent/1523317)/download-documents; RAH mandatory notices, IPR2019 series — https://ptacts.uspto.gov/ptacts/public-informations/petitions/1523317/download-documents; N.D. Cal. MDL 3:18-md-02874 docket (Illston, J.) — https://unicourt.com/case/pc-db1-rah-color-technologies-llc-et-al-v-adobe-inc-et-al-[915222](/patent/915222); RPX Empower docket page for 1:17-cv-00894 — https://litigation.rpxcorp.com/litigation/ilndce-[336239](/patent/336239)-rah-color-technologies-v-r-r-donnelley-sons-company.

I'll research defendant-side counsel for R.R. Donnelley in N.D. Ill. 1:17-cv-00894, starting with docket and firm sources.

A Law360 attorney profile links James L. Davis, Jr. of Ropes & Gray to this exact case. Let me verify and find co-counsel.

Let me try CourtListener's RECAP docket and the RPX page directly.

Sourcing caveat, up front

I hit a hard retrieval wall on the defendant side of this docket. Unlike the plaintiff's team (which I could reconstruct from the complaint, the PTAB mandatory notices, and RAH's other cases), I could not open the N.D. Ill. docket sheet for 1:17-cv-00894, and no public opinion, brief, or PTAB filing in the related RAH matters appears to name RR Donnelley's lawyers. RRD was not a party to the Adobe IPRs, was not transferred into MDL 2874, and filed no publicly indexed motion in this case that I could find. So the defendant's counsel roster below is thin and largely inferential — which is itself a finding worth stating plainly rather than padding with plausible-sounding Chicago patent litigators.

[Verified] = confirmed by a source I actually retrieved. [Unverified] = not confirmed against the docket.

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Defendant's counsel of record

James L. Davis, Jr. — most likely lead counsel [Verified as RRD's counsel in this case by Law360's litigation tracker; role designation Unverified]

• Firm: Ropes & Gray LLP.
• Office: Chicago, IL at the time of filing (Law360's attorney page lists him as "Chicago, IL"); he has since relocated to Ropes & Gray's East Palo Alto office, where the firm's 2021 Daily Journal profile of him places him.
• Basis for the identification: Law360's attorney-profile page for Davis lists, under his case history, "February 02, 2017 — RAH Color Technologies LLC v R R Donnelley & Sons Company, Illinois Northern, 830 (Patent)" — i.e., this exact case, by filing date and N.D. Ill. venue. Law360 populates those entries from docketed appearances, so this is good — but not primary — evidence of an appearance. Corroborating it, Ropes & Gray's own 2021 California Daily Journal "Top IP Lawyers" profile of Davis expressly lists "RR Donnelley & Sons Co." among his representative clients, alongside Emerson Electric, Samsung, SAP, Activision Blizzard, Electronic Arts, NXP, SkyKick, and Spansion. [Verified — law360.com/firms/ropes-gray/attorneys/james-l-davis-jr; ropesgray.com Daily Journal profile PDF, May 2021]
• Relevant patent litigation experience: High-stakes patent litigation across district court, the Federal Circuit, and the PTAB. Electrical and computer engineering degree (and J.D.) from the University of Illinois, which maps well onto the color-measurement/imaging subject matter here. His signature work is the long-running Emerson Electric v. SIPCO campaign, where as lead/co-lead/second chair he won at the PTAB, the Federal Circuit, and the Supreme Court (SIPCO LLC v. Emerson Electric Co., No. 18-1364 (Fed. Cir. 2021) (per curiam, two days after argument); the CBM/Article III reviewability line of decisions). Listed as a 2021 Daily Journal Top IP Lawyer. [Verified — same sources]
• Likely role: Given his seniority, in-house-client relationship with RRD, and the fact that this was a seven-patent, bet-the-premedia-workflow case, he was almost certainly lead counsel rather than local counsel. But Law360's tracker does not distinguish lead from supporting counsel, so I am labeling the role [Unverified].

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What I could NOT verify — stated explicitly

1. No docket-sheet confirmation. I could not retrieve ECF appearance entries, a Rule 7.1 disclosure, an answer, a motion to dismiss/transfer, or any corporate-representation statement for RRD in 1:17-cv-00894. The RPX Empower page (litigation.rpxcorp.com/litigation/ilndce-336239) confirms only the caption, court, and 02/02/2017 filing date; the docket detail sits behind the RPX paywall. Docket Alarm surfaced only the complaint PDF (Dkt. 1), reproduced as Ex. 2227 in IPR2019-00628. Note: Docket Alarm's index for this case shows just the complaint, which is itself a hint — though not proof — that nothing else was ever filed (see item 4).
2. No co-counsel identified. I have no evidence of additional Ropes & Gray attorneys on the matter, no local-counsel arrangement (unnecessary — Ropes & Gray has a Chicago office), and no second firm. I decline to name Ropes & Gray Chicago partners who handle patent cases generically, because that would be invention. Candidates would have to be confirmed from the docket.
3. No in-house counsel identified. RR Donnelley's legal department is large and I found no public record naming an RRD in-house lawyer on this matter. Do not assume the General Counsel appeared.
4. No appearance for the plaintiff side has a counterpart here — the asymmetry is real: RAH's counsel are documented across a dozen related proceedings, while RRD's lead counsel appears in this case only in a Law360 tracker.
5. Consistency check against the prior sections: Nothing here contradicts the earlier finding that the terminal disposition is unknown. If anything, the thinness of the record (only Dkt. 1 indexed) is weak circumstantial support for a very early, low-paper resolution — a quick license or voluntary dismissal — consistent with RRD's absence from RAH's MDL 2874 transfer notices. That is an inference, not a fact, and should not be stated as the outcome.
6. Davis's current affiliation caveat. His Law360 page still lists Chicago; his Ropes & Gray bio and the 2021 Daily Journal piece place him in East Palo Alto. For a 2017 case, the Chicago designation is the one that matters.

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How to close the gap (concrete next steps)

• PACER for N.D. Ill. 1:17-cv-00894, ECF Nos. 2–20: this is the only authoritative source for the "ATTORNEY Appearance" entries, the assigned judge, and the disposition. The earlier sections flagged the same gap; it remains the single highest-value pull for this case.
• Bloomberg Law / Lex Machina docket for the same case number — Lex Machina in particular indexes counsel of record by party and would confirm or refute Davis within seconds.
• Cross-check Ropes & Gray's own "representative matters" and attorney pages for RR Donnelley patent matters circa 2016–2018.
• Check RR Donnelley's 10-K/10-Q legal-proceedings disclosures for FY2017 (Item 3 / Note on Commitments & Contingencies) — public-company disclosure obligations sometimes reveal the existence and rough timing of a patent case resolution even when the docket does not. RRD's later 2020 Chapter 11 is separate and I found no link to this case.

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Summary table