DIETGOAL INNOVATIONS LLC v. SWEETGREEN, INC.

Filing 4

ORDER DENYING TRANSFER re: pldg. ( 1 in MDL No. 2507), ( 88 in MDL No. 2507, 20 in OKW/5:13-cv-00372, 37 in TXE/2:11-cv-00418, 1 7 in TXE/2:12-cv-00331, 18 in TXE/2:12-cv-00338, 19 in TXE/2:12-cv-00340, 19 in TXE/2:12-cv-00736, 19 in TXE/2:12-cv-00737, 36 in TXE/2:12-cv-00761, 19 in TXE/2:12-cv-00764, 17 in TXE/2:12-cv-00768, 19 in TXE/2:12-cv-00770, 22 in TXE/2:12-cv-00775, 2 0 in TXE/2:12-cv-00777, 19 in TXE/2:13-cv-00042, 17 in VAE/2:13-cv-00154, 19 in VAE/2:13-cv-00401, 21 in VAE/2:13-cv-00430) The motion to transfer, pursuant to 28 U.S.C. 1407, is DENIEDSigned by Judge Marjorie O. Rendell, Acting Chairman, PANEL ON MULTIDISTRICT LITIGATION, on 2/19/2014. Associated Cases: MDL No. 2507, DC/1:13-cv-02032, NYS/1:13-cv-08379, NYS/1:13-cv-08381, NYS/1:13-cv-08384, NYS/1:13-cv-08391, OKW/5:13-cv-00372, TXE/2:11-cv-00418, TXE/2:12-cv-00331, TXE/2:12-cv-00338, TXE/2:12-cv-00340, TXE/2:12-cv-00736, TXE/2:12-cv-00737, TXE/2:12-cv-00761, TXE/2:12-cv-00764, TXE/2:12-cv-00768, TXE/2:12-cv-00770, TXE/2:12-cv-00775, TXE/2:12-cv-00777, TXE/2:13-cv-00042, VAE/2:13-cv-00154, VAE/2:13-cv-00401, VAE/2:13-cv-00430 (JG)

UNITED STATES JUDICIAL PANEL
on
MULTIDISTRICT LITIGATION

IN RE: DIETGOAL INNOVATIONS, LLC (‘561)
PATENT LITIGATION

MDL No. 2507

ORDER DENYING TRANSFER

Before the Panel:* Pursuant to 28 U.S.C. § 1407, patentholder DietGoal Innovations, LLC
(DietGoal) moves for centralization of this patent infringement litigation in the Eastern District of
Texas. This litigation currently consists of 22 actions pending in five districts, as listed on
Schedule A.1
Thirty-five defendants2 responded in opposition to DietGoal’s motion. Several defendants
suggest that, in the event that the Panel is inclined to centralize the litigation, the transferee district
should be one of the following districts: the Southern District of New York, the Western District of
Oklahoma or the Eastern District of Virginia.
These actions involve similar allegations of infringement of U.S. Patent No. 6,585,516 (‘516
patent) entitled “Method and Systems for Computerized Visual Behavior Analysis, Training and
Planning.” The ‘516 patent relates to the field of computer-based methods of employing visual
techniques for training individuals to modify behavior, and planning by individuals for modified
behavior. Specific applications of the patent include training individuals to modify diet behavior and

*

Judges John G. Heyburn II, Paul J. Barbadoro and Lewis A. Kaplan took no part in the
decision of this matter.
1

There were 25 actions listed on DietGoal’s motion for centralization, but three actions
pending in the Central District of California (one action) and the Eastern District of Texas (two
actions) were subsequently dismissed during the motion’s pendency.
2

Arby’s Restaurant Group, Inc.; Bravo Media, LLC; Chipotle Mexican Grill, Inc.; CKE
Restaurants, Inc.; Culver Franchising System, Inc.; Darden Corp.; Deli Management, Inc. d/b/a
Jason’s Deli; DineWise, Inc.; Doctor’s Associates, Inc. d/b/a Subway; Domino’s Pizza, Inc.; Dunkin’
Brands Group, Inc.; El Pollo Loco, Inc.; General Mills Sales, Inc.; Hearst Communications, Inc. d/b/a
Seventeen Magazine; International Dairy Queen, Inc.; Jack in the Box Inc.; Marco’s Franchising,
LLC; McDonald’s Corp.; Meredith Corp.; Moe’s Franchisor LLC; Mrs. Fields Famous Brands, LLC;
Red Robin International, Inc.; Rubio’s Restaurants, Inc.; Starbucks Corp.; Steak ‘N Shake
Enterprises, Inc. and Steak ‘N Shake Operations Inc.; Sweetgreen, Inc.; Taco Bell Corp.; Taco
John’s International, Inc.; Taco Mayo Franchise Sys., Inc.; Time Inc.; Tyson Foods, Inc.; Wegmans
Food Markets, Inc.; Wendy’s International, Inc.; and Whataburger Restaurants LLC.

-2plan for improved diet practices. There is undoubtedly factual overlap among these actions.
However, in these circumstances, several considerations have persuaded us that centralization will
not serve the convenience of the parties and witnesses or further the just and efficient conduct of this
litigation.
The disparate progress of the actions, the heightened inconvenience that transfer may cause
certain parties, and the history of dismissals in this litigation all weigh against centralization here.
This litigation began in September 2011. Centralization likely will hinder the progress of the more
advanced Eastern District of Texas actions that involve the majority of the defendants. The Eastern
District of Texas Kellan action, which involves nearly a third of the litigations’ remaining defendants,
is significantly advanced, with a Markman hearing already held, fact discovery concluding in March
2014, and jury selection scheduled to commence on June 2, 2014. Centralization may well delay the
progress of this action. Centralization also threatens to slow the progress of the somewhat advanced
Eastern District of Texas Arby’s action, which involves over a third of the remaining defendants.
During the pendency of this litigation, ten defendants have been transferred to a different
forum pursuant to Section 1404. In several instances, defendants later have been re-transferred to
a different forum. Centralization, in our opinion, would especially inconvenience these defendants.
Finally, the Panel often looks to licensing activity or a pattern of dismissals in patent litigation
to determine whether the cases will require significant judicial attention in the absence of
centralization.3 At its height, this litigation involved over 75 defendants; today, more than half of
those defendants have been dismissed. Since this motion was filed, an additional three actions have
been dismissed. It seems likely that many of the remaining actions will be resolved in a similarly
efficient fashion.

3

See In re: ArrivalStar S.A. Fleet Mgmt. Sys. Pat. Litig., 802 F.Supp.2d 1378, 1379 (2011)
( “[T]he patentholder, and other parties opposing centralization of their individual actions, have
convinced us that centralization in fact may thwart the orderly resolution of these patent cases.
ArrivalStar has brought nearly 100 actions since it began bringing infringement suits in various
districts across the country approximately seven years ago, and none of the actions thus far appear
to have required significant judicial attention.”). See also In re: Brandywine Comms. Techs., LLC
Pat. Litig., MDL No. 2462, 2013 WL 4048510 (J.P.M.L. Aug. 8, 2013) (denying centralization
where more than half of the defendants had settled and “actions are being litigated in a manner that
is likely to lead to their resolution”).

-3IT IS THEREFORE ORDERED that the motion, pursuant to 28 U.S.C. § 1407, for
centralization of these actions is denied.

PANEL ON MULTIDISTRICT LITIGATION

Marjorie O. Rendell
Acting Chairman
Charles R. Breyer
Ellen Segal Huvelle

Sarah S. Vance

IN RE: DIETGOAL INNOVATIONS, LLC (‘561)
PATENT LITIGATION

MDL No. 2507

SCHEDULE A

District of District of Columbia
DietGoal Innovations LLC v. Sweetgreen, Inc., C.A. No. 1:13-2032
Southern District of New York
DietGoal Innovations LLC v. Hearst Communications, Inc., d/b/a Seventeen Magazine,
C.A. No. 1:13-8379
DietGoal Innovations LLC v. Time, Inc., C.A. No. 1:13-8381
DietGoal Innovations LLC v. Meredith Corporation, C.A. No. 1:13-8384
DietGoal Innovations LLC v. Bravo Media LLC (Division of NBC Universal Media,
LLC), C.A. No. 1:13-8391
Western District of Oklahoma
DietGoal Innovations LLC v. Taco Mayo Franchise Systems, Inc., C.A. No. 5:13-00372
Eastern District of Texas
DietGoal Innovations LLC v. Arby's Restaurant Group, Inc., et al., C.A. No. 2:11-00418
DietGoal Innovations LLC v. General Mills Sales, Inc., C.A. No. 2:12-00331
DietGoal Innovations LLC v. Tyson Foods, Inc., C.A. No. 2:12-00338
DietGoal Innovations LLC v. Whataburger Restaurants LLC, C.A. No. 2:12-00340
DietGoal Innovations LLC v. Doctor's Associates, Inc., C.A. No. 2:12-00736
DietGoal Innovations LLC v. Red Robin International, Inc., C.A. No. 2:12-00737
DietGoal Innovations LLC v. Kellan Restaurant Management Corp. d/b/a 54th Street
Grill & Bar, C.A. No. 2:12-00761
DietGoal Innovations LLC v. Chipotle Mexican Grill, Inc., C.A. No. 2:12-00764
DietGoal Innovations LLC v. Freshii USA, Inc., C.A. No. 2:12-00768
DietGoal Innovations LLC v. Marco's Franchising, LLC, C.A. No. 2:12-00770
DietGoal Innovations LLC v. Taco John's International, Inc., C.A. No. 2:12-00775
DietGoal Innovations LLC v. Genghis Grill Franchise Concepts, LP,
C.A. No. 2:12-00777
DietGoal Innovations LLC v. Mrs. Fields Famous Brands, LLC, C.A. No. 2:13-00042
Eastern District of Virginia
DietGoal Innovations LLC v. Wegmans Food Markets, Inc., C.A. No. 2:13-00154
DietGoal Innovations LLC v. Dunkin' Brands Group, Inc., C.A. No. 2:13-00401
DietGoal Innovations LLC v. Domino's Pizza, Inc., C.A. No. 2:13-00430