DCT
3:18-md-02874
RAH Color Tech LLC v. Adobe Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Electronics For Imaging, Inc. (Delaware)
- Defendant: RAH Color Technologies LLC (Virginia)
- Plaintiff’s Counsel: Jeffer Mangels Butler & Mitchell LLP
- Case Identification: 3:18-md-02874, N.D. Cal., 09/04/2019
- Venue Allegations: The complaint asserts that venue is proper and notes that the case was transferred to the Northern District of California as part of a multidistrict litigation proceeding.
- Core Dispute: Plaintiff, a manufacturer of printing technology, seeks a declaratory judgment that its products do not infringe four patents related to color reproduction technology that Defendant has asserted against Plaintiff's downstream customers.
- Technical Context: The technology at issue involves systems and methods for ensuring consistent and accurate color reproduction across different printing devices (e.g., monitors, proofers, commercial presses) in various locations.
- Key Procedural History: This declaratory judgment action follows a series of patent infringement lawsuits filed by RAH against EFI’s customers, including Ricoh, Quad/Graphics, and Xerox, based on their use of EFI's products. EFI brings this action as an upstream manufacturer to resolve the infringement allegations against its own technology. The complaint also notes that RAH offered a covenant not to sue EFI for direct infringement of method claims of two of the four asserted patents, which EFI alleges is inadequate to resolve the controversy.
Case Timeline
| Date | Event |
|---|---|
| 1996-02-26 | Priority Date for ’870, ’008, ’444, ’704 Patents |
| 2006-02-07 | U.S. Patent No. 6,995,870 Issues |
| 2010-06-01 | U.S. Patent No. 7,729,008 Issues |
| 2013-04-09 | U.S. Patent No. 8,416,444 Issues |
| 2014-06-24 | U.S. Patent No. 8,760,704 Issues |
| 2014-08-22 | RAH sends letter to Konica Minolta regarding EFI products |
| 2014-10-20 | RAH sends letter to Ricoh Americas Corporation regarding EFI products |
| 2015-09-17 | RAH sues Ricoh Americas Corporation for patent infringement |
| 2017-06-30 | RAH sues Quad/Graphics, Inc. for patent infringement |
| 2017-09-20 | RAH sues Xerox Corporation for patent infringement |
| 2018-03-13 | EFI files its original suit in the Northern District of California |
| 2018-09-14 | RAH serves Final Infringement Contentions on Xerox |
| 2018-11-29 | RAH lawsuit against Quad/Graphics is dismissed following settlement |
| 2019-06-20 | RAH sends letter to EFI with purported covenant not to sue on ’444 and ’704 patents |
| 2019-06-24 | EFI and Xerox agree on indemnification for RAH's infringement claims |
| 2019-09-04 | EFI files Fourth Amended Complaint for Declaratory Judgment |
II. Technology and Patent(s)-in-Suit Analysis
No probative visual evidence provided in complaint.
U.S. Patent No. 6,995,870 - "System for Distributing and Controlling Color Reproduction at Multiple Sites," Issued Feb. 7, 2006
The Invention Explained
- Problem Addressed: The patent addresses the challenge of maintaining uniform color quality across a network of geographically distributed manufacturing operations, such as regional printing plants for a national magazine, where variations in equipment, materials, and operator skill can lead to inconsistent product appearance (Compl. ¶10; ’870 Patent, col. 1:36-44).
- The Patented Solution: The invention proposes a computerized system that uses a shared data structure, termed a "Virtual Proof," to distribute color transformation information across a network of nodes (sites) (’870 Patent, col. 2:18-24). Each node has a rendering device (e.g., a press or proofer) and uses local calibration data to create transformations that ensure the final color output appears substantially the same across all devices, within the limits of each device's capabilities (’870 Patent, Abstract).
- Technical Importance: This approach aimed to decentralize printing and manufacturing for efficiency without sacrificing the centralized quality control needed for brand consistency and product uniformity (Compl. ¶10; ’870 Patent, col. 1:26-34).
Key Claims at a Glance
- The complaint identifies independent claim 34 as asserted by RAH in underlying litigation (Compl. ¶65).
- Essential elements of independent claim 34 include:
- A method for controlling color reproduction at a plurality of sites, each having a color device.
- Providing information for transforming input color image data into output color image data for the devices.
- Such that colors produced appear substantially the same within the colors attainable by each device.
- Wherein the information for transforming comprises information relating the color gamuts of different color devices to each other.
- And further comprises user preferences for color reproduction for at least one of the devices.
- The complaint notes that dependent claims 39 and 43 have also been asserted (Compl. ¶65).
U.S. Patent No. 7,729,008 - "System for Distributing and Controlling Color Reproduction at Multiple Sites," Issued Jun. 1, 2010
The Invention Explained
- Problem Addressed: The ’008 Patent addresses the same general problem as the ’870 Patent: ensuring consistent color reproduction across different devices and locations in a production workflow (Compl. ¶11; ’008 Patent, col. 1:15-24).
- The Patented Solution: The invention describes a system that stores color transformation data in memory. This data includes tonal transfer curves and color transformations that are based at least partly on "calibration data in device-independent units of color" (’008 Patent, Abstract; col. 2:1-12). This allows the system to control the rendering of color image data and compensate for factors like changing viewing conditions (’008 Patent, Abstract).
- Technical Importance: The use of device-independent color units (like CIELAB) provides a common, objective language for color, allowing different devices with different native color spaces (e.g., RGB monitors, CMYK printers) to target a consistent appearance (’008 Patent, col. 3:6-19).
Key Claims at a Glance
- The complaint identifies independent claim 28 as asserted by RAH in underlying litigation (Compl. ¶72).
- Essential elements of independent claim 28 include:
- A system for controlling color reproduction.
- A memory for storing data.
- The stored data includes at least tonal transfer curves, color image data, and one or more color transformations.
- The transformations convert a first set of color coordinates into a second set.
- The tonal transfer curves and transformations are at least partly in accordance with calibration data in "device-independent units of color."
- The data is useable in combination to control rendering of the color image data.
- At least one of the transformations is a chromatic adaptation transform useable to compensate for changes in viewing conditions.
- The complaint notes that dependent claims 29-31, 33, 35-37, 39, and 41 have also been asserted (Compl. ¶72).
U.S. Patent No. 8,416,444 - "System for Distributing and Controlling Color Reproduction at Multiple Sites," Issued Apr. 9, 2013
- Technology Synopsis: This patent relates to systems for color management that use stored information, including a "chromatic adaptation transform" and a "gamut descriptor data structure," to convert color coordinates between different devices and viewing conditions (Compl. ¶¶82, 83). The technology is designed to function within standardized frameworks like the International Color Consortium (ICC) profiles (Compl. ¶83).
- Asserted Claims: Independent claims 11 and 41 (Compl. ¶81).
- Accused Features: The accused features are EFI's Fiery controllers/print servers and associated software, which are alleged to infringe by virtue of their compliance with ICC Version 4.0 profiles, allegedly requiring the use of the claimed chromatic adaptation transform and gamut descriptor (Compl. ¶¶81, 83, 85).
U.S. Patent No. 8,760,704 - "System for Distributing and Controlling Color Reproduction at Multiple Sites," Issued Jun. 24, 2014
- Technology Synopsis: This patent describes a system for color reproduction that uses files containing a three-dimensional array to determine if a color coordinate is inside or outside of a device's color gamut (Compl. ¶92). It also claims an instrument with a light source and photosensors for making color measurements to enable corrections to tonal transfer curves (Compl. ¶92).
- Asserted Claims: Independent claims 11 and 29 (Compl. ¶91).
- Accused Features: RAH alleges that EFI's products infringe claim 11 by implementing the "gamut Tag" of the ICC specification, which RAH contends is the claimed "three-dimensional array" (Compl. ¶93). RAH also accuses systems that bundle EFI products with printing presses containing measurement instruments of infringing claim 29 (Compl. ¶¶91, 92).
III. The Accused Instrumentality
Product Identification
- The accused products are the EFI Fiery (EX) Print Server, Command WorkStation, and/or Color Profiler Suite (Compl. ¶64). These components are often sold together with printers and presses from various manufacturers like Xerox and Ricoh (Compl. ¶¶39-42).
Functionality and Market Context
- The accused products constitute a digital front end and workflow suite for managing color in high-end, commercial printing environments (Compl. ¶10). The Fiery Print Server processes print jobs, the Command Workstation provides a user interface for managing those jobs, and the Color Profiler Suite creates device-specific color profiles to ensure accuracy and consistency (Compl. ¶¶1, 28). The complaint alleges that these products are central to the printing workflows of EFI's customers, who have been the targets of RAH's litigation campaign (Compl. ¶¶27-28, 35).
IV. Analysis of Infringement Allegations
’870 Patent Infringement Allegations
| Claim Element (from Independent Claim 34) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method for controlling color reproduction at a plurality of sites | The accused EFI products are used at multiple sites (e.g., different printing facilities) to control color reproduction. | ¶¶10, 64 | col. 1:11-14 |
| providing information for transforming input color image data into output color image data...such that colors produced by the color devices appear substantially the same | The accused EFI products allegedly use standard International Color Consortium ("ICC") profiles to transform color data to achieve a consistent appearance across different devices. | ¶65 | col. 2:25-39 |
| wherein said information for transforming comprises information relating the color gamuts of different ones of said color devices to each other | RAH alleges that the accused products' use of the ICC-defined perceptual intent reference medium gamut (“PRMG”) provides a standardized gamut representation that relates the gamuts of different devices. | ¶66 | col. 18:15-28 |
| and user preferences for color reproduction for at least one of the color devices | The complaint states that RAH's allegations cover this element but does not detail the specific functionality beyond noting it is tied to compliance with ICC profiles. | ¶65 | col. 10:45-49 |
- Identified Points of Contention:
- Scope Questions: A primary question may be whether compliance with an industry standard like the ICC profile inherently provides "information relating the color gamuts of different...devices to each other" as required by the claim. EFI alleges that the ICC v4.0 specification does not even mention the PRMG that RAH's theory relies upon, and that ICC v4.3 makes its use optional, suggesting a potential mismatch between the standard's function and the claim's requirement (Compl. ¶67).
- Technical Questions: A key factual question will be whether the accused products actually implement the PRMG as RAH alleges. EFI explicitly denies that its products implement PRMG, framing this as a direct factual dispute (Compl. ¶67).
’008 Patent Infringement Allegations
| Claim Element (from Independent Claim 28) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system for controlling color reproduction...comprising...a memory for storing...tonal transfer curves...and one or more color transformations | The accused EFI products (e.g., Fiery Print Server) store data such as tonal transfer curves and color transformations (e.g., in ICC profiles) to control color reproduction. | ¶¶71, 72 | col. 20:19-26 |
| wherein said tonal transfer curves and said one or more color transformations are at least partly in accordance with calibration data in device-independent units of color | RAH alleges that the accused products, by supporting ICC Specification Version 4.0, perform calibration using standardized profiles, which RAH contends constitutes using "device-independent units of color" (e.g., Lab or CIEXYZ). | ¶¶73, 20-21 | col. 20:21-23 |
| and are useable in combination to control rendering of said color image data | The stored data and transformations are used together by the Fiery server to render the final printed image. | ¶72 | col. 20:22-24 |
| and at least one of said one or more color transformations is a chromatic adaptation transform useable to compensate for change in viewing conditions | The complaint does not provide sufficient detail for analysis of this element. | ¶72 | col. 20:24-26 |
- Identified Points of Contention:
- Technical Questions: The central dispute appears to be a fundamental disagreement on the technical operation of the accused products. RAH alleges the use of "device-independent" units for calibration, while EFI contends its products use Adobe PostScript, which specifies color transformations for calibration using "device-dependent units of color" like CMYK density curves (Compl. ¶74). The case may turn on evidence demonstrating how the accused systems actually perform calibration.
- Scope Questions: What constitutes "calibration data" under the claim? Does it refer to the underlying measurements used to build a profile, or the profile itself? The answer may determine whether the use of a standardized profile (which is device-independent) created from device-dependent measurements meets the claim limitation.
V. Key Claim Terms for Construction
Term: "information relating the color gamuts of different ones of said color devices to each other" (’870 Patent, Claim 34)
- Context and Importance: This term is critical because RAH's infringement theory equates the use of standardized ICC profiles and a reference gamut (PRMG) with this claimed function. The scope of this term will determine whether implementing an industry standard is sufficient to infringe, or if a more specific, bespoke relationship between gamuts is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the "Virtual Proof" as a file structure that "enabl[es] accurate communication and control of color in a distributed production environment" (’870 Patent, col. 10:52-54), which could suggest that any standardized data structure serving this purpose falls within the claim.
- Evidence for a Narrower Interpretation: The detailed description focuses on specific procedures for "gamut scaling" and creating "mappings of colors realizable on one device onto those realizable on another" (’870 Patent, col. 21:42-45), potentially suggesting a more active, calculated mapping process than simply adopting a standard reference gamut.
Term: "calibration data in device-independent units of color" (’008 Patent, Claim 28)
- Context and Importance: This term is the core of the dispute for the ’008 patent. EFI alleges its products use device-dependent data (CMYK) for calibration, while RAH alleges infringement based on the use of standardized ICC profiles, which operate in a device-independent space (CIEXYZ or Lab). The construction of this term will likely resolve the infringement question.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses converting color measurements into "device independent color coordinates" like Lab* (’008 Patent, col. 23:17-19). One could argue that any data ultimately expressed or used in such a coordinate system qualifies, even if derived from device-dependent measurements.
- Evidence for a Narrower Interpretation: The specification distinguishes between device colorant values and device-independent color coordinates throughout the calibration process description (see FIG. 5, Steps 3 & 4; ’008 Patent, col. 22-23). This may support an interpretation that "calibration data" refers to the foundational measurement data, which EFI alleges is device-dependent in its products, not the final transformed profile.
VI. Other Allegations
- Indirect Infringement: The complaint states that RAH, in its lawsuits against EFI's customers, has alleged that EFI instructs or encourages infringement. These allegations are based on EFI-provided user guides and documentation that allegedly describe how to use the accused products in an infringing manner (Compl. ¶¶29, 44).
- Willful Infringement: The complaint does not explicitly mention allegations of willfulness. However, it details an extensive history of RAH sending notice letters to EFI's customers and suing them for infringement based on EFI's products, beginning as early as 2014 (Compl. ¶¶16-20). This history of alleged pre-suit knowledge could form the basis for a willfulness claim against EFI.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of standardization versus specificity: Does the accused products' implementation of industry standards for color management (such as ICC profiles and Adobe PostScript) satisfy the specific functional requirements of the patent claims? Or do the claims, which describe "relating" gamuts and using "device-independent calibration data," require a more particularized technical operation than what the standards provide?
- A key evidentiary question will be one of technical operation: The parties present conflicting accounts of how the accused products perform calibration. The case will likely depend on factual evidence establishing whether the EFI systems fundamentally operate using the device-dependent units asserted by EFI or the device-independent units required by the claims.