RAH Color Technologies LLC v. Xerox Corp.

I'll research this case across multiple sources before drafting the overview.

I have good initial leads. Let me dig into the MDL proceedings, the IPR outcomes on the '008 patent, and the resolution.

Key finding: the '008 patent survived its IPR. Now let me verify the transfer mechanics, the '008 patent's technical content, and post-2019 developments.

Case overview: RAH Color Technologies LLC v. Xerox Corp., No. 6:18-cv-06746 (W.D.N.Y.)

The parties and their business models. RAH Color Technologies LLC is a Virginia limited liability company with an office in Alexandria, Virginia, formed in 2005 as "a vehicle for an on-going licensing program" for inventions of Dr. Richard A. Holub, a Ph.D. neurophysiologist and color scientist who is the named inventor on the asserted patents. See First Am. Compl. ¶¶ 1, 20, RAH Color Techs. LLC v. Xerox Corp., No. 1:17-cv-06813 (N.D. Ill.) (reproduced as Ex. 2232 in IPR2019-00628). Holub is a Rochester-native color scientist who worked at Eikonix/Kodak, Agfa/Bayer and SuperMac, served on the TAGA board, and taught at RIT before building a color-calibration prototype with RIT student labor in the mid-1990s (id. ¶¶ 12–18). Functionally RAH is a patent assertion entity — it does not sell a commercial product — but it differs from a classic aggregator in that the inventor-owner himself directs the campaign, and RAH has consistently presented itself as an established licensor: it told the MDL court that 27 companies had taken licenses averaging "less than $1 million" each, and its complaints cite 11 major manufacturer licenses plus 13 end-user licenses (Joint Prelim. Status Report at 2–3, In re RAH Color Techs. LLC Patent Litig., No. 3:18-md-02874-SI (N.D. Cal. Jan. 7, 2019); First Am. Compl. ¶ 24). Xerox Corp. is the operating-company defendant — a New York corporation headquartered in Norwalk, Connecticut, with its historic manufacturing and research base in Webster/Rochester, New York — that makes and sells digital presses, production print servers, color-measurement hardware and color-management/workflow software. Notably, several accused "Xerox" print servers are OEM'd from Electronics For Imaging (EFI), which is why Xerox's 2015 response to RAH's demand letters was that "its suppliers" would deal with RAH directly (First Am

I'll research this case systematically across the docket, PTAB, and secondary sources.

Good foundation. Now let me get the W.D.N.Y. docket specifics and the PTAB proceedings.

Let me pull the actual W.D.N.Y. docket from CourtListener to pin down events and the dismissal.

RAH Color Technologies LLC v. Xerox Corp., No. 6:18-cv-06746 (W.D.N.Y.)

A note on scope: this was a short-lived case. Xerox was one of roughly a dozen defendants RAH sued in a coordinated color‑management campaign; the Xerox docket never reached claim construction, summary judgment, or trial. The substantive legal activity happened in two adjacent fora — the JPML MDL and Adobe's PTAB IPRs — and those are covered below because they drove the Xerox outcome.

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1. Pre-suit notice (2014–2017) — willfulness predicate

The complaint's notice narrative is the most fully documented part of the record and supplies the willfulness/knowledge allegations:

RAH later used this history for § 285 exceptional-case and enhanced-damages theories (see the parallel Heidelberg complaint, Jan. 10, 2019, ¶¶ 296–300).

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2. Filing and initial pleadings (N.D. Ill., 2017–2018)

• 2017-09-20 — Complaint filed, N.D. Ill. No. 1:17-cv-06813, assigned to Judge Amy J. St. Eve. Jury demand. Six patents: '870, '251, '897, '008, '444, '704, all tracing to Dr. Richard A. Holub's "System for Distributing and Controlling Color Reproduction at Multiple Sites" family. Accused products were grouped by RAH into categories: "Accused Print Servers" (EFI Fiery with Command WorkStation), "Accused Color Print Servers" (CX Print Server, FreeFlow Core), "Accused Color Press Systems" (iGen, Versant with Automated Color Quality Suite), and "Accused Color Matching Systems" (MatchAssure, IntegratedPLUS).
• '008-specific allegations: RAH charted independent claim 28 (and dependents) against the EX print server / Command WorkStation combination, alleging ICC v.4 profiles supply the claimed tonal transfer curves, color transformations, and a chromatic adaptation transform (the ICC chad tag), with device-independent (Lab) calibration data. This is the patent singled out in the case metadata.
• First Amended Complaint expanded to eight patents (adding '909 and '357).
• 2018-03-16 — Xerox Answer (Dkt. 30) and Motion to Transfer to N.D. Cal. under § 1404(a) (Dkt. 31), supported by declarations of Andrew Post, Joseph Calibria, and Eric J. Ward.
• 2018-03-22 — Protective Order (Dkt. 34).
• 2018-04-09 — RAH opposition to transfer (Dkt. 37) with Park and Holub declarations and eight exhibits; same day a Scheduling Order (Dkt. 36). Xerox reply 2018-04-16 (Dkt. 38).
• 2018-05-23 — Reassignment to Judge Andrea R. Wood by Executive Committee order (Dkt. 39) after Judge St. Eve left the bench.

Caveat: I found no separate declaratory-judgment counterclaim docket entry — Dkt. 30 is docketed simply as an "ANSWER to amended complaint." No ruling on Xerox's § 1404(a) motion appears in the record I could retrieve; it was overtaken by the JPML transfer.

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3. JPML transfer to W.D.N.Y. (2018) — the pivotal procedural event

• The JPML created MDL No. 2874, In re RAH Color Technologies LLC Patent Litigation. RAH's own mandatory notices and the MDL joint status report describe consolidation of the Adobe, Xerox, EFI, Kodak, Dalim, and Heidelberger cases for coordinated pretrial proceedings.
• Critically, the panel did not send Xerox to N.D. Cal. with the others. The First Amendment to Hearing Session Order (signed Oct. 11, 2018; filed Nov. 29, 2018) struck "RAH Color Technologies LLC v. Xerox Corporation, C.A. No. 1:17-06813" from the Northern District of Illinois line and inserted it under the Western District of New York as No. 6:18-06746 — i.e., Xerox's home district, consistent with Xerox's § 1404(a) preference, though achieved by the panel rather than by Judge Wood.
• 2018-10-17 — case opened in W.D.N.Y. before Judge Charles J. Siragusa. The Adobe/EFI (and later Kodak/Dalim/Heidelberger) cases proceeded in N.D. Cal. before Judge Susan Illston, MDL No. 3:18-md-02874-SI.
• Discrepancy flagged: RPX Insight reports the W.D.N.Y. case as "Closed 12/06/2018" with a latest entry 12/12/2018, while the case metadata (authoritative here) records termination on 2019-10-15. The most likely explanation is an administrative/statistical closure on transfer-and-coordination followed by the formal dismissal-by-agreement entry in October 2019. I could not retrieve the text of the operative dismissal order or stipulation.

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4. Discovery milestones of strategic significance

From the MDL Joint Preliminary Status Report (filed for the 2019-01-15 status conference before Judge Illston), the Xerox case was actually the most advanced of the group:

• Infringement and invalidity contentions had been exchanged months earlier (i.e., mid-to-late 2018 under the N.D. Ill. local patent rules track set by the April 9, 2018 scheduling order).
• Xerox's invalidity contentions: 106 references identified; 25 charted across 32 charts; 81 noted but not charted — a heavy invalidity investment signaling an obviousness-driven defense.
• Xerox served 70 document requests and 9 interrogatories; RAH answered and produced its entire production from the earlier Quad/Graphics case (a leverage point, since Adobe later argued Quad was coordinating with the defense group).
• RAH served 18 interrogatories and 27 document requests; Xerox produced 428 documents.
• 2018-08-01 — RAH served a Rule 30(b)(6) notice on Xerox; no Xerox fact depositions had been taken as of the January 2019 report.
• RAH proposed cost-containment alternatives in the MDL — one-day arbitration and a stipulated damages figure — and floated an early summary judgment of invalidity procedure. Both went nowhere.

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5. Claim construction

No Markman proceeding occurred in the Xerox case. Because the case was transferred for coordination and then dismissed, the '008 claims were never construed by Judge Siragusa.

Claim construction did occur in the N.D. Cal. MDL (RAH v. Adobe, No. 3:18-cv-03277-SI), on three terms shared with the Xerox patents:

• "sites" ('870 and '444)
• "appear substantially the same" ('870)
• "interactive conference" ('444)

Notably, the N.D. Cal. record reflects that none of the PTAB decisions in the RAH IPRs construed these terms — a point the court had to address when reconciling the district court and PTAB records. That gap matters for issue preclusion and for the Federal Circuit's later treatment.

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6. Parallel PTAB proceedings — the real contest over the '008 patent

Xerox itself filed no IPRs. RAH took the position that Xerox and EFI were time-barred under § 315(b) (both had been served more than a year earlier). Instead, Adobe filed four petitions on 2019-02-01:

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

Good initial hits. Now let me pull the full docket to see all attorney appearances, including any local counsel and post-transfer appearances.

Let me check the full docket on CourtListener/RECAP and confirm whether a W.D.N.Y. local counsel ever appeared.

Counsel of Record for Plaintiff RAH Color Technologies LLC

Bottom line: RAH was represented throughout by a single outside firm — Global IP Law Group, LLC of Chicago — which acted as national/lead counsel across the entire RAH campaign (N.D. Ill. → W.D.N.Y. → MDL 2874 → the Adobe IPRs). Three attorneys entered appearances for the plaintiff in this case. No local counsel ever appeared for RAH in the W.D.N.Y., and no in-house counsel is on the docket (RAH is the patent-holding company of inventor Dr. Richard A. Holub, a non-lawyer).

The three attorneys of record

Experience notes

• Berten — The N.D. Cal. MDL docket (3:18‑cv‑03277‑SI, RAH v. Adobe) lists him as "LEAD ATTORNEY" for RAH, and he described himself at the April 4, 2019 MDL status conference as appearing "for RAH Color Technologies, in all cases." He is the public face of RAH's assertion campaign against Adobe, Xerox, EFI, Quad/Graphics, Kodak, Heidelberger, and Dalim. Illinois Bar No. 6200898; also a member of the N.D. Cal. bar.
• Park — A registered patent attorney (Reg. No. 68,865) with a doctorate; he signed the pleadings in this case and was designated Lead Counsel for Patent Owner in Adobe's IPRs against the '008, '444, '897, and '761 patents (IPR2019‑00627/00628/00629/00646), with Ragnar Olson as back-up. His declaration in those proceedings confirmed he was "counsel for RAH Color Technologies LLC in four related matters," expressly including this W.D.N.Y. case.
• Richards — Supporting/appearance counsel on all RAH district-court matters; argued and appeared alongside Berten and Park at the MDL case management conference. Admitted pro hac vice in N.D. Cal. (the MDL forum) in 2019.

People sometimes mistakenly listed as plaintiff's counsel

• Ragnar Olson (Global IP Law Group) — appeared only as back-up PTAB counsel in the Adobe IPRs; I found no district-court appearance by him in 6:18‑cv‑06746.
• Eric J. Ward, Jeffrey J. Harradine, William R. Leinen (Ward Greenberg, Rochester, NY) and David Eiseman / Michelle Schmit — these are Xerox's counsel (Ward Greenberg local counsel in W.D.N.Y.; Eiseman and Schmit admitted/appeared on the N.D. Ill. docket). Do not attribute them to the plaintiff.
• Meagan C. Leslie appears in UniCourt's aggregated MDL 2874 attorney list, but I could not verify she represented RAH rather than a defendant, so I am not listing her as plaintiff's counsel.

Verification gaps and caveats

1. No plaintiff's local counsel in W.D.N.Y. The only plaintiff appearances carried onto the W.D.N.Y. docket are the three N.D. Ill. entries (Dkts. 5–7) transferred on 10/17/2018. The April 2019 MDL appearance sheet likewise lists only "GLOBAL IP LAW GROUP … BY: DAVID BERTEN, ESQ., ALISON AUBRY RICHARDS, ESQ., IRWIN PARK, PH.D., ESQ." for RAH. That said, the Justia docket extract I could access is partial (entries through roughly Dkt. 38), so I cannot fully rule out a late-filed W.D.N.Y. appearance.
2. Termination entry. Case metadata gives termination 2019‑10‑15 "dismissed by agreement," but I could not retrieve the text of the stipulation/order. Note that RPX Insight reports the W.D.N.Y. docket as "closed 12/06/2018" with a last entry 12/12/2018 — a likely artifact of the MDL transfer/administrative closing rather than the true termination; treat the 2019‑10‑15 date as authoritative per the case metadata.
3. Nothing is sealed with respect to counsel identity — all three appearances are public docket entries.
4. Patent scope drift. The docket shows this case was pleaded as an eight-patent assertion (RPX counts 8 patents-in-suit; the First Amended Complaint sets out dozens of counts), even though the case metadata isolates the '008 patent — relevant context if you are mapping which counsel argued which patent, since the same three GIPLG lawyers handled all of them.

Key sources: Justia docket for 6:18‑cv‑06746 (Dkts. 1, 5, 6, 7, 21, 23, 30–38); N.D. Ill. 1:17‑cv‑06813 Dkt. 1 at 59 (signature block); MDL 2874 Joint Preliminary Status Report (Jan. 7, 2019) and April 4, 2019 CMC transcript (Ex. 1038 in IPR2019‑00646); RAH's Mandatory Notices in IPR2019‑00627/00628; PTAB institution decision in IPR2019‑00627 (Paper 41, Sept. 10, 2019); JPML First Amendment to Hearing Session Order (Oct. 11, 2018).

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

Let me dig into the docket and the MDL transcript identifying Xerox's counsel.