DietGoal Innovations LLC v. Arby's Restaurant Group, Inc. et al

Filing 408

RESPONSE in Opposition re 373 MOTION to Sever and in Addition or in the Alternative to Dismiss for Improper Venue or Transfer to the Central District of California Plaintiff DietGoal Innovations LLC's Response in Opposition to Defendant El Pollo Loco, Inc.'s Motion to Sever and in Addition or in the Alternative to Dismiss for Improper Venue or Transfer to the Central District of California filed by DietGoal Innovations LLC. (Attachments: # 1 Exhibit Exhibit A, # 2 Exhibit Exhibit B, # 3 Exhibit Exhibit C, # 4 Exhibit Exhibit D, # 5 Exhibit Exhibit E, # 6 Exhibit Exhibit F, # 7 Exhibit Exhibit G, # 8 Exhibit Exhibit H, # 9 Exhibit Exhibit I, # 10 Exhibit Exhibit J, # 11 Exhibit Exhibit K, # 12 Exhibit Exhibit L, # 13 Exhibit Exhibit M, # 14 Exhibit Exhibit N, # 15 Exhibit Exhibit O, # 16 Exhibit Exhibit P, # 17 Exhibit Exhibit Q, # 18 Exhibit Exhibit R, # 19 Exhibit Exhibit S, # 20 Exhibit Exhibit T, # 21 Exhibit Exhibit U, # 22 Text of Proposed Order)(Bukovcan, Niknaz)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
DIETGOAL INNOVATIONS LLC,
Plaintiff,
v.
ARBY’S RESTAURANT GROUP, INC.,
et al.,
Defendants.

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Civil Action No. 2:11-cv-00418-DF
Jury Trial Demanded

PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

BUETHER JOE & CARPENTER, LLC
Christopher M. Joe (Lead Counsel)
Eric W. Buether
Brian A. Carpenter
Niky Bukovcan
Mark D. Perantie
1700 Pacific Avenue
Suite 2390
Dallas, Texas 75201
Telephone: [phone]
Facsimile:
[phone]
ATTORNEYS FOR PLAINTIFF
DIETGOAL INNOVATIONS LLC

TABLE OF CONTENTS

I. 

INTRODUCTION .............................................................................................................. 2 

II. 

BACKGROUND ................................................................................................................ 3 

III. 

EPL’S WEBSITE................................................................................................................ 4 

IV. 

EPL WAS PROPERLY JOINED ....................................................................................... 6 

V. 

VENUE IS PROPER BECAUSE THE EASTERN DISTRICT OF TEXAS MAY
PROPERLY EXERCISE PERSONAL JURISDICTION .................................................. 8 
A. 

General Principles Governing Personal Jurisdiction .............................................. 9
1. 

Minimum Contacts.................................................................................... 10 

2. 

Traditional Notions of Fair Play and Substantial Justice .......................... 11 

B.
C.

Established Case Law Compels Denial of EPL’s Motion .................................... 15

D.
VI.

EPL has Purposefully Availed Itself of the Benefits and Protections of
Texas by Establishing Minimum Contacts ........................................................... 12

The Exercise of Personal Jurisdiction Over EPL Is in Accordance with
Traditional Notions of Fair Play and Substantial Justice ...................................... 17

SEVERING THE CLAIMS AND TRANSFERRING JURISDICTION WASTES
JUDICIAL RESOURCES ................................................................................................ 18
A.

The Private Interest Factors Weigh Against Transfer........................................... 19
1.

2.
B.

Severing the claims against each defendant and transferring venue
wastes judicial resources and creates unnecessary problems that
make trial difficult and expensive ............................................................. 19
The other private factors are neutral, making the totality of the
private factors weigh against transfer ....................................................... 21

The Totality of the Applicable Public Interest Factors Weigh Against
Transfer ................................................................................................................. 22
1.

The amount of court congestion in both Districts is the same .................. 22
i

2.
3.
VII.

The Eastern District has a localized interest that should be decided
at home ...................................................................................................... 22
The Eastern District of Texas is more familiar with the laws that
will govern this case.................................................................................. 23

CONCLUSION ................................................................................................................. 23

ii

TABLE OF AUTHORITIES
Cases
AdvanceMe, Inc. v. Rapidpay LLC,
450 F. Supp. 2d 669 (E.D. Tex. Feb. 16, 2006) ...................................................... 9, 12, 13
Alpine View Co. Ltd. v. Atlas Copco AB,
205 F.3d 208 (5th Cir. 2000) .............................................................................................. 9
American Eyewear, Inc. v. Peeper’s Sunglasses and Accessories, Inc.,
106 F. Supp. 2d 895 (N.D. Tex. 2000) ............................................................................. 11
Asahi Metal Indus. Co. v. Superior Court,
480 U.S. 102, 105 (1987) .................................................................................................. 10
Bearry v. Beach Aircraft Corp.,
818 F.2d 370 (5th Cir. 1987) ............................................................................................ 10
Burger King Corp. v. Rudzewicz,
471 U.S. 462 (1985) .................................................................................................... 10, 12
Carrot Bunch Co., Inc. v. Computer Friends, Inc.,
218 F. Supp. 2d 820 (N.D. Tex. Aug. 14, 2002)............................................................... 11
Collins v. Northern Telecom Ltd.,
216 F.3d 1042 (Fed. Cir. 2000)......................................................................................... 14
Elecs. For Imaging, Inc. v. Coyle,
340 F.3d 1344 (Fed. Cir. 2003)............................................................................. 11, 12, 18
Eolas Techs., Inc. v. Adobe Sys., Inc.,
2010 U.S. Dist. LEXIS 104125 (E.D. Tex. Sept. 28, 2010) ................................... 7, 21, 22
Ganas, LLC v. Sabre Holdings Corp.,
Civil Action No. 2:10-CV-320 (E.D. Tex. Oct. 19, 2011) ........................................... 6, 20
Guidry v. United States Tobacco Co.,
188 F.3d 619 (5th Cir. 1999) ....................................................................................... 12, 17
Hsin Ten Enter. USA, Inc. v. Clark Enters.,
138 F. Supp. 2d (S.D.N.Y. 2000)...................................................................................... 16
In re Genentech,
566 F.3d 1338 (Fed. Cir. 2009)................................................................................... 21, 22
iii

In re Hoffman-La Roche Inc.,
587 F.3d 1333 (Fed. Cir. 2009)......................................................................................... 21
In re Volkswagen,
371 F.3d 201 (5th Cir. 2004) ............................................................................................ 19
In re Volkswagen of Am., Inc.,
545 F.3d 304 (5th Cir. 2008) ................................................................................ 18, 19, 21
In re Volkswagen of Am., Inc.,
566 F.3d 1349 (Fed. Cir. 2009)............................................................................. 19, 20, 21
Intellectual Science and Tech., Inc. v. Sony Elecs., Inc.,
589 F.3d 1179 (Fed. Cir. 2009)......................................................................................... 14
Landgraf v. Usi Film Prods.,
511 U.S. 244 (U.S. 1994).................................................................................................... 6
Martin v. Hadix,
527 U.S. 343 (1999) ............................................................................................................ 6
McFadin v. Gerber,
587 F.3d 753 (5th Cir. 2009) ................................................................................... 9, 17, 18
Mieczkowski v. Masco Corp.,
997 F. Supp. 782 (E.D. Tex. Mar. 18, 1998) .................................................................... 10
Mink v. AAAA Development, L.L.C.,
190 F.3d 333 (5th Cir. 1999) .................................................................... 11, 12, 15, 16, 17
Moncrief Oil Int’l, Inc. v. OAO Gazprom,
481 F.3d 309 (5th Cir. 2007) .............................................................................................. 9
MyMail, LTD v. America Online, Inc.,
223 F.R.D. 455 (E.D. Tex. Sept. 2, 2004) ...................................................................... 6, 7
Paz v. Brush Eng’r Materials, Inc.,
445 F.3d 809 (5th Cir. 2006) ...................................................................................... 10, 12
Powerhouse Prods., Inc. v. Widgery,
564 F. Supp. 2d 672 (E.D. Tex. March 26, 2008) ................................................ 10, 12, 13
QR Spex, Inc. v. Motorola, Inc.,
507 F. Supp. 2d 650 (E.D. Tex. 2007) ........................................................................ 15, 18
iv

Red River Fiber Optic Corp. v. Verizon Services Corp.,
2010 U.S. Dist. LEXIS 27827 (E.D. Tex. March 23, 2010) ............................................. 18
Reid v. Gen. Motors Corp.,
240 F.R.D. 260 (E.D. Tex. 2007)........................................................................................ 7
Revell v. Lidov,
317 F.3d 467 (5th Cir. 2002) ............................................................................................ 16
Silent Drive, Inc. v. Strong Indus., Inc.,
326 F.3d 1194 (Fed. Cir. 2003)............................................................................... 9, 10, 14
SIPCO LLC v. Amazon.com, Inc.,
Civil Action No. 2:08-CV-359 (E.D. Tex. June 4, 2009) ................................................. 20
Softview LLC v. Apple Inc.,
2011 U.S. Dist. LEXIS 140540 (D. Del. Dec. 7, 2011) ...................................................... 7
SynQor, Inc. v. Ericsson Inc.,
No. 2:11-cv-00054 (E.D. Tex. Feb. 6, 2012) .................................................................... 20
The Ansel Adams Publishing Rights Trust v. PRS Media Partners,
2010 U.S. Dist. LEXIS 126791 ........................................................................................ 16
Trintec Industries, Inc. v. Pedre Promotional Products, Inc.,
395 F.3d 1275 (Fed. Cir. 2005)..................................................................................... 8, 22
VE Holding Corp. v. Johnson Gas Appliance Co.,
917 F.2d 1574 (Fed. Cir. 1990)........................................................................................... 8
Versata Software, Inc. v. Internet Brands, Inc.,
2009 BL 209239 (E.D. Tex. Sept. 30, 2009) .............................................................. 12, 16
Wilson v. Belin,
20 F.3d 644 (5th Cir. 1994) .............................................................................................. 10
World-Wide Volkswagen Corp. v. Woodson,
444 U.S. 286 (1980) .......................................................................................................... 17
Zippo Mfg. Co. v. Zippo Dot Com, Inc.,
952 F. Supp. 1119 (W.D. Pa. 1997) ................................................................ 11, 12, 15, 17

v

Statutes 
28 U.S.C. § 1391 ....................................................................................................................... 8, 23
28 U.S.C. § 1400 ............................................................................................................................. 8
28 U.S.C. § 1404 ................................................................................................. 1, 2, 18, 19, 20, 21
FED. R. CIV. P. 12............................................................................................................................ 1
FED. R. CIV. P. 20.................................................................................................................... 2, 6, 7
FED. R. CIV. P. 21............................................................................................................................ 1
FED. R. CIV. P. 42 ............................................................................................................................ 7
Leahy-Smith America Invents Act Pub. L. 112-29,
125 Stat. 284, 35 U.S.C. §299 (2011) ............................................................ 2, 6, 7, 20, 21

vi

Pending before the Court are several of the Defendants’ separate and joint motions to
dismiss for lack of personal jurisdiction and/or misjoinder and motions to transfer venue.1
Collectively, the Defendants’ motions seek to spread out this litigation across seven states, not
including the Defendants who would remain in the present action in the Eastern District of
Texas.

In its response, Plaintiff DietGoal Innovations LLC (“DietGoal”) addresses the

Defendants’ motions generally as well as the specific issues raised by each Defendant.
Accordingly, pursuant to 28 U.S.C. § 1404 and the Federal Rules of Civil Procedure
12(b)(3) and 21, DietGoal files this response and requests that the Court deny Defendant El Pollo
Loco, Inc.’s (“EPL” or “CA Defendant I”) Motion to Sever and in Addition Or in the Alternative
to Dismiss for Improper Venue Or Transfer to the Central District of California (“EPL’s
Motion”). Dkt. 373.

1

Defendants IAC, Daily Burn, and Food Network have filed a motion to dismiss for improper
joinder (Dkt. 308) and a motion to transfer venue to the Southern District of New York (Dkt.
307); Defendant WAWA has filed a motion to dismiss for lack of personal jurisdiction (Dkt.
296) and a motion to transfer to the Eastern District of Pennsylvania (Dkt. 321); Defendants
Google Inc. and Jimmy John’s Franchise LLC have filed a motion to dismiss under FED. R. CIV.
P. 12(b)(6) for failure to state a claim based on unpatentable subject matter (Dkt 300); Defendant
QIP Holder LLC d/b/a Quizno’s has filed a motion to dismiss or in the alternative to sever the
claims and transfer venue to the District of Colorado (Dkt 294); Defendant Hearst
Communications, Inc. has filed a motion to dismiss or in the alternative to sever and transfer to
the Southern District of New York (Dkt 292); Defendant Wegmans Food Market, Inc. has filed a
motion to dismiss for lack of personal jurisdiction and alternative motion to sever and transfer to
the Southern District of New York (Dkt 287); Defendant Domino’s Pizza, Inc. has filed a motion
to sever the claims and transfer venue to the Eastern District of Michigan (Dkt 283); Defendant
Rodale, Inc. has filed a motion to sever and transfer to the Eastern District of Pennsylvania (Dkt
230); Defendant Weight Watchers International, Inc. has filed a motion to dismiss or in the
alternative to sever the claims and transfer venue to the Southern District of New York (Dkt
203); Defendants Tim Hortons Inc. and Tim Hortons USA Inc. have filed a motion to dismiss for
lack of personal jurisdiction (Dkt 210); and Accord, Inc. d/b/a Taco Time Northwest has filed a
motion for dismiss for lack of personal jurisdiction (Dkt 127); Defendant El Pollo Loco, Inc. has
filed a motion to sever and in addition or in the alternative to dismiss for improper venue and to
transfer to the Central District of California (Dkt. 373); Defendant Rubio’s Restaurants, Inc. has
filed a motion to dismiss for lack of personal jurisdiction (Dkt. 381).
PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 1

Additionally, pursuant to L.R. 7(g), DietGoal requests the Court to schedule an oral
hearing for this Motion and all other similar Motions raised by the Defendants discussed herein.
I.

INTRODUCTION

Collectively, the Defendants seek to create twelve separate actions across at least seven
judicial districts, shredding any notions of preserving judicial economy. Whether pleading in the
alternative or as a direct request for relief, NY Defendants I (IAC, Daily Burn, and Food
Network), NY Defendant II (Wegmans Food Markets, Inc.), NY Defendant III (Hearst
Communications, Inc.), NY Defendant IV (Weight Watchers International, Inc.), PA Defendant I
(Wawa, Inc.), PA Defendant II (Rodale, Inc.), CO Defendant (QIP Holder LLC d/b/a Quiznos),
MI Defendant (Domino’s Pizza, Inc.), CA Defendant I (El Pollo Loco, Inc.) all seek to sever
their claims and transfer venue to the Southern District of New York, the Eastern District of
Pennsylvania, the District of Colorado, the Eastern District of Michigan, or the Central District
of California respectively. These Defendants also allege that they have been improperly joined
under the Leahy-Smith America Invents Act Pub. L. 112-29, § 19, 125 Stat. 284 (2011) (“AIA”)
and/or FED. R. CIV. P. 20 and 21. Although Defendants Tim Horton, Taco Time, and Rubio’s
have not moved to transfer venue, if their motions to dismiss are granted DietGoal will be forced
to pursue its claims against them in Delaware, Washington, and California respectively. Such
severances and transfers are directly contrary to the purpose of 35 U.S.C. § 1404(a) and
constitute an impermissive retroactive application of the AIA.
EPL requests to sever its claims due to improper joinder under the AIA pursuant to FED.
R. CIV. P. 20 and in addition to or in the alternative to dismiss for improper venue or to be
transferred to the Central District of California, even though it maintains eight restaurants in the
State of Texas. Dkt. 373. Its grounds for severance, transfer, and dismissal are unfounded.
PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 2

II.

BACKGROUND

DietGoal commenced the present action on September 15, 2011, when it filed its
complaint for infringement of U.S. Patent No. 6,585,516 (“the ‘516 Patent”) against EPL and
other Defendants. Dkt. 1. EPL has eight restaurants within the state of Texas. See Motion at 2,
n. 2. Its website, www.elpolloloco.com, which has a computerized meal planning interface at
http://www.elpolloloco.com/nutrition.aspx, falls squarely within the claimed method and system
of the ‘516 Patent.
The ‘516 Patent is directed towards “[a] system and method for computerized visual
behavior analysis, training, and planning. The system includes a User Interface (UI), a Meal
Database, a Food Database, a Picture Menus, and a Meal Builder.” Exhibit A, ‘516 Patent, at
Abstract. Dr. Alabaster is the inventor of the ‘516 Patent, and DietGoal is its exclusive licensee.
Dr. Alabaster is the Founder, President, and CEO of DietFit, Inc. (“DietFit”) and is also a clinical
professor of medicine at George Washington University. See www.dietfit.com. In 1999, he
founded DietFit after spending more than 20 years conducting scientific research at the National
Cancer Institute in Maryland and at George Washington University. Id. He became interested in
the relationship between diet and health and founded the Institute for Disease Prevention in the
mid-1980s and is currently the Vice-Chairman and Scientific Director of the Cancer Research
Foundation of America. Id. The ‘516 Patent is one of the many ways in which Dr. Alabaster has
contributed to field of health and medicine.
DietGoal has filed the present action in order to protect Dr. Alabaster’s invention from
the infringing activities of others, such as those conducted by the Defendants. It is incorporated
in the State of Texas and complies with all corporate formalities according to Texas State law.

PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 3

As with other such cases filed in the Eastern District of Texas, the present action has
proceeded according to the Federal Rules of Civil Procedure as well as the Local Civil and
Patent Rules. Joining all Defendants in this action in one venue has preserved judicial economy
and allowed for effective management of a complex patent litigation matter.
III.

EPL’S WEBSITE

EPL’s website, www.elpolloloco.com, provides a variety of interactive pages that a user
can access through the home page that beacon the user to click and play. Exhibit D. Central on
the homepage are six hypermedia images that take the user to the “News & Media – Promotions”
tab that provides additional information about each advertised feature. Exhibit E.
From the homepage, the “Nutritional Information” link is prominently displayed on the
lower left hand corner of the screen and is also accessible through the first displayed tab, “Food
& Nutrition.” Clicking on either link takes the user to the highly interactive meal planning
interface. Exhibit F. The user is presented with an empty tabletop image with a banner of EPL’s
menu items running across the top supported by a list of the different meal options on the left
hand side and a nutritional calculator on the right hand side. Id. Depending on the user’s choice
from the meal options on the left hand side, a different set of food items is presented across the
banner. See, e.g., Exhibit G. The user may then select any and all of the food items to create a
unique meal. The nutritional information of each uniquely created meal is displayed to the user
on the right hand side. See, e.g., Exhibit H. The user may further customize a meal by
modifying certain food items. See, e.g., Exhibit I, Mash Potatoes w/Gravy Option. At any point,
the user may select the “Start Over” button to delete all meals selected or to delete individual
food items by clicking the “Delete” button from the “Meal List” tab on the right hand side of the
displayed tabletop. See, e.g., Exhibit J. The user may also receive a unique breakdown of each
PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 4

customized meal by selecting the “Nutritional Information” tab above the chosen meal. See, e.g.,
Exhibit K.
The “Food & Nutritional” tab also provides other interactive features and sub-menus.
For example, any East Texas user may select the “Recipes” sub-tab and further select a recipe to
rate and comment on. Exhibit L. The user may also print, email, and share the recipe on
Facebook, Twitter, and Digg. Through links on EPL’s website, the user may also participate in
the “Lindora Clinic” that “teaches a multi-faceted approach to weight loss” and further view
nutritional information on the “Healthy Dining finder” website. Exhibit M, N, and O.
Other interactive features of the EPL website are accessible through the other menu tabs.
For example, the user may view videos that display featured menu items and promotional events.
Exhibit P.

The user may interact with these videos by playing, pausing, forwarding, and

rewinding them. Any East Texas resident, especially those who may be thinking about making
the move or commute to a El Pollo Loco restaurant within Texas or elsewhere, may also apply
for a position by filing out an on-line form that allows for users to indicate an East Texas city or
town as their place of residence. Exhibit Q. Users may also email and share current openings to
a friend or relative. Exhibit R.
Any East Texas user may also purchase gift cards through the EPL website. These gift
cards may be purchased for personal use or to be given to friends or relatives who live near an
EPL restaurant. Exhibit S. Users may also choose to give such gift cards as corporate incentives
or add EPL to their “Scrip card program.” Exhibit T. Users may also register with EPL in order
to place online catering orders for any event. Exhibit U.
EPL has not provided any information, through declaration or otherwise, indicating the
number of East Texas internet users who have visited its website, including its meal planning
PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 5

interface, or those who have purchased any gift cards or placed orders for events from this
District. Additionally, EPL has not provided any information regarding any other contacts with
the Eastern District of Texas.
IV.

EPL WAS PROPERLY JOINED

EPL’s arguments regarding Rule 20(a)(2)(A) ignore this Court’s holding in MyMail, LTD
v. America Online, Inc., 223 F.R.D. 455, 474-475 (E.D. Tex. Sept. 2, 2004) and instead urge a
contrary outcome that would retroactively apply the AIA. Motion at 3-4. The AIA, codified at
35 U.S.C. § 299, applies only to a “civil action commenced on or after the date of the enactment
of [the] Act,” namely, September 16, 2011. 35 U.S.C. § 299(e) (emphasis added). This fact is
explicitly clear and undisputed. The Defendant cannot and does not contest that this action
commenced prior to enactment of the AIA and that it was a named defendant in the original
complaint that was filed on September 15, 2011. Yet, it asks for a holding that applies the AIA
retroactively to this Court’s interpretation of Rule 20 in order to overturn MyMail.
However, “the joinder provision [of the AIA] is not retroactive.” Ganas, LLC v. Sabre
Holdings Corp., Civil Action No. 2:10-CV-320, Dkt. 405, at 15-16 (E.D. Tex. Oct. 19, 2011) (J.
Folsom). “Retroactivity is not favored in the law” and as such “congressional enactments and
administrative rules will not be construed to have retroactive effect unless their language requires
this result.” Landgraf v. Usi Film Prods., 511 U.S. 244, 264 (U.S. 1994). “[C]lear congressional
intent” favoring retroactive application of a newly enacted statute is required. See, e.g., Martin
v. Hadix, 527 U.S. 343, 354 (1999). “Presumably, if Congress had intended to apply the new
joinder provision [of the AIA] retroactively, Congress could have done so, as it did with the new
false marking provision.” Ganas, No. 2:10-CV-320, at 16.

PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 6

Even if Defendant is correct in its assessment as to the reasons for enactment of the
joinder provision of the AIA, it cannot point to any clear, express provision in the Act that would
justify dismissal. See Softview LLC v. Apple Inc., Civil Action No. 10-389-LPS, 2011 U.S. Dist.
LEXIS 140540 (D. Del. Dec. 7, 2011) (denying defendants’ motion for reconsideration based on
the AIA and holding that “even crediting Defendants’ argument that the new statutory provision
‘clarifies’ the application of Rule 20(a)(2)(A) in circumstances such as those presented here, the
provision is not ‘an intervening change in controlling law’”).
As such, MyMail still applies to this case and addresses any concerns over whether this
court may properly join defendants in patent cases under Rule 20. See id. at 457 (finding that an
argument against joining defendants who have infringed the same patent “is a hyper-technical
[interpretation] that perhaps fails to recognize the realities of complex, and particularly patent,
litigation”). The Defendant’s authority for its misguided contention are cases in other districts
that do not follow this Court’s holding in MyMail. Motion at 4. Defendant’s sole citation to an
Eastern District decision involved a motion to bifurcate for trial purposes and is inapplicable to
this case. Id. (citing Reid v. Gen. Motors Corp., 240 F.R.D. 260 (E.D. Tex. 2007)).
Additionally, the Defendant cannot show prejudice in being properly joined. It has not
shown that the products or methods at issue are “so different that determining infringement in
one case is less proper or efficient than determining infringement in multiple cases.” See Eolas
Technologies, Inc. v. Adobe Systems, Inc., Civil Action No. 6:09-CV-446, 2010 U.S. Dist.
LEXIS 104125 (E.D. Tex. Sept. 28, 2010), at *15-16 (citing FED. R. CIV. P. 42(b)). Each of the
Defendants in this case, including EPL, infringe the ‘516 Patent through their respective websites
that include a computerized meal planning interface - constituting substantially similar products
and methods of infringement. See id.; MyMail, 223 F.R.D. at 474-75. As with other multiPLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 7

defendant patent litigation cases, issues such as claim construction, discovery, scheduling, and
protective orders are also equally shared by all Defendants. Any minor prejudice that EPL may
seemingly suffer does not justify severance or dismissal of this case.
V.

VENUE IS PROPER BECAUSE THE EASTERN DISTRICT OF TEXAS MAY
PROPERLY EXERCISE PERSONAL JURISDICTION
Venue in a patent action against a corporate defendant exists wherever there is personal

jurisdiction. VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574, 1583 (Fed. Cir.
1990) (holding that 28 U.S.C. §§ 1400 and 1391(c) must be read together such that in patent
litigation “a defendant that is a corporation shall be deemed to reside in any judicial district in
which it is subject to personal jurisdiction at the time the action is commenced”); see also Trintec
Industries, Inc. v Pedre Promotional Products, Inc., 395 F.3d 1275, 1280 (Fed. Cir. 2005)
(“quickly dispatch[ing]” defendant’s motion to dismiss for improper venue because “the venue
point is a non-issue”). “In a State which has more than one judicial district and in which a
defendant that is a corporation is subject to personal jurisdiction at the time an action is
commenced, such corporation shall be deemed to reside in any district in that State within which
its contacts would be sufficient to subject it to personal jurisdiction if that district were a separate
State.” 28 U.S.C. § 1391(c). In patent litigation “the injury occurs at the place where the
infringing activity directly impacts on the interests of the patentee.” Id.
Here, given the fact that ELP has eight stores within the State of Texas establishes
personal jurisdiction for the State. The only remaining question is whether venue is proper in the
Eastern District of Texas, as opposed to another district within Texas. As shown below, the
Eastern District of Texas has personal jurisdiction, and ELP’s infringing activities in the Eastern

PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 8

District of Texas has directly impacted DietGoal’s interest, as the exclusive licensee of the
patent-in-suit.
A.

General Principles Governing Personal Jurisdiction
A plaintiff need merely “present sufficient facts as to make out only a prima facie case

supporting jurisdiction.” Alpine View Co. Ltd. v. Atlas Copco AB, 205 F.3d 208, 215 (5th Cir.
2000). The court must accept as true all of the plaintiff’s uncontested allegations and construe all
of the facts and pleadings in a light most favorable to the plaintiff. Id.
The determination of the exercise of personal jurisdiction in patent infringement cases is
“intimately related to patent law” such that Federal Circuit law governs the issue. AdvanceMe,
Inc. v. Rapidpay LLC, 450 F. Supp. 2d 669, 673 (E.D. Tex. Feb. 16, 2006) (quoting Silent Drive,
Inc. v. Strong Indus., Inc., 326 F.3d 1194, 1201 (Fed. Cir. 2003)). To determine if the exercise of
personal jurisdiction is appropriate, the court must undertake a two-step analysis. McFadin v.
Gerber, 587 F.3d 753, 759 (5th Cir. 2009). The first step requires the court to assess the scope of
the forum state’s long-arm statute. Id. The second step is to determine if the exercise of
personal jurisdiction comports with the Due Process Clause of the Fourteenth Amendment. Id.
Because the Texas long-arm statute “reaches as far as the federal constitutional requirements of
due process,” the analysis “collapses into the federal due-process inquiry.” AdvanceMe, 450 F.
Supp. 2d at 673; McFadin, 587 F.3d at 759; Moncrief Oil Int’l, Inc. v. OAO Gazprom, 481 F.3d
309, 311 (5th Cir. 2007).
The requirement for due process is met if: (1) the defendant has “purposefully availed
[itself] of the benefits and protections of the forum state by establishing “minimum contacts with
the forum state,” and (2) exercising personal jurisdiction “does not offend traditional notions of

PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 9

fair play and substantial justice.” Asahi Metal Indus. Co. v. Superior Court, 480 U.S. 102, 105
(1987); Paz v. Brush Eng’r Materials, Inc., 445 F.3d 809, 813 (5th Cir. 2006).
1.

Minimum Contacts

Minimum contacts with the forum state may be established either through “general
personal jurisdiction” or “specific personal jurisdiction.” Wilson v. Belin, 20 F.3d 644, 647 (5th
Cir. 1994). General personal jurisdiction exists when the defendant has “continuous and
systematic” contacts with the forum. Mieczkowski v. Masco Corp., 997 F. Supp. 782, 785 (E.D.
Tex. Mar. 18, 1998) (quoting Bearry v. Beach Aircraft Corp., 818 F.2d 370, 374 (5th Cir. 1987)).
Specific jurisdiction exists where a plaintiff alleges that “a controversy is related to or ‘arises out
of’ a defendant’s contacts with the forum.” Wilson v. Belin, 20 F.3d 644, 647 (5th Cir. 1994).
The plaintiff satisfies the due process inquiry for specific jurisdiction when (1) the defendant
purposefully directs its activities at residents of the forum state, and (2) the claim “arises out of”
or “relates to” those activities. Powerhouse Prods., Inc. v. Widgery, 564 F. Supp. 2d 672, 678
(E.D. Tex. March 26, 2008) (quoting Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472
(1985)); see also Silent Drive, 326 F.3d at 1202 (noting that a third factor sometimes listed,
“whether assertion of personal jurisdiction is ‘reasonable and fair,’” actually corresponds to the
“fair play and substantial justice” prong of the due process analysis). Specific jurisdiction “can
exist even if the defendant’s contacts are isolated and sporadic.” Silent Drive, Inc. v. Strong
Indus., Inc., 326 F.3d 1194, 1200 (Fed. Cir. 2003). The “Due Process Clause may not readily be
wielded as a territorial shield to avoid interstate obligations that have been voluntarily assumed.”
Burger King, 471 U.S. at 472-73.
When dealing with personal jurisdiction of a non-resident defendant due to the use of its
website, the court must analyze the website based on the site’s “nature and quality of commercial
PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

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activity,” the Fifth Circuit standard first set forth in Mink. Mink v. AAAA Development, L.L.C.,
190 F.3d 333, 336 (5th Cir. 1999) (adopting Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F.
Supp. 1119, 1124 (W.D. Pa. 1997)). Under the Mink/Zippo standard, the level of a website’s
commercial activities is categorized and described as follows:
At one end of the spectrum are situations where a defendant clearly does
business over the Internet. If the defendant enters into contracts with residents of a
foreign jurisdiction that involve the knowing and repeated transmission of
computer files over the Internet, personal jurisdiction is proper.
At the opposite end are situations where a defendant has simply posted
information on an Internet Web site which is accessible to users in foreign
jurisdictions. A passive Web site that does little more than make information
available to those who are interested in it is not grounds for the exercise personal
jurisdiction.
The middle ground is occupied by interactive Web sites where a user can
exchange information with the host computer. In these cases, the exercise of
jurisdiction is determined by examining the level of interactivity and commercial
nature of the exchange of information that occurs on the Web site.
Mink, 190 F.3d at 333 (quoting Zippo, 952 F. Supp. at 1124). In website cases, the Mink/Zippo
standard applies to the analysis of both general and specific jurisdiction. Carrot Bunch Co., Inc.
v. Computer Friends, Inc., 218 F. Supp. 2d 820, 826 (N.D. Tex. Aug. 14, 2002); see also
American Eyewear, Inc. v. Peeper’s Sunglasses and Accessories, Inc., 106 F. Supp. 2d 895, n. 10
(N.D. Tex. 2000).
2.

Traditional Notions of Fair Play and Substantial Justice

Once the plaintiff shows that there are sufficient minimum contacts to satisfy due
process, it becomes the defendant’s burden to present a “compelling case that the presence of
some other consideration would render jurisdiction unreasonable.” Elecs. for Imaging, Inc. v.
Coyle, 340 F.3d 1344, 1351-52 (Fed. Cir. 2003). In making this determination, the court must
consider the following five factors:
PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

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(1) The burden on the defendant; (2) the interests of the forum state; (3) the
plaintiff’s interest in obtaining relief; (4) the interstate judicial system’s interest in
obtaining the most efficient resolution of controversies; and (5) the shared
interests of the several states in furthering fundamental substantive social policies.
Paz v. Brush Eng’r Materials, Inc., 445 F.3d 809, 814 (5th Cir. 2006); Elecs. for Imaging, 340
F.3d at 1351.
It is “rare” for a defendant to establish that where the requirements for minimum contacts
are met the exercise of jurisdiction would be unreasonable. Id. at 1352. These considerations
may “serve to establish the reasonableness of jurisdiction upon a lesser showing of minimum
contacts that would otherwise be considered.” Burger King, 471 U.S. at 477; Guidry v. United
States Tobacco Co., 188 F.3d 619, 631 (5th Cir. 1999). Because “modern…communications
have made it much less burdensome for a party sued to defend himself in a State where he
engages in economic activity, it usually will not be unfair to subject him to the burdens of
litigation in another forum for disputes relating to such activity.” Burger King, 471 U.S. at 474.
B.

EPL has Purposefully Availed Itself of the Benefits and Protections of Texas by
Establishing Minimum Contacts
This Court’s exercise of personal jurisdiction over EPL is proper under Mink/Zippo

standard for both general and specific personal jurisdiction. The website www.elpolloloco.com
clearly falls within the Mink/Zippo middle ground and its level of interactivity and commercial
nature meets the requisite standard. In website cases where this Court has found that personal
jurisdiction was proper, the level of interactivity and the commercial nature of the site were
similar to one at issue here. See AdvanceMe, 450 F. Supp. 2d at 673; Powerhouse, 564 F. Supp.
2d at 679; Versata Software, Inc. v. Internet Brands, Inc., No. 2:08-CV-313, 2009 BL 209239
(E.D. Tex. Sept. 30, 2009) (finding that “case law demonstrates that operation of an interactive
website similar to the defendant’s is sufficient to establish personal jurisdiction over out-of-state
PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 12

defendants”). For example, in AdvanceMe, Inc. v. Rapidpay LLC, 450 F. Supp. 2d 669, 673
(E.D. Tex. Feb. 16, 2006), the defendant’s website allowed a potential customer to calculate the
amount of cash it could receive from the defendant, the site had a drop-down menu that allowed
the potential customer to identify its state, and provided the option of filling out an on-line form
in order to apply for the defendant’s services through its website. Because of these features, the
court determined that the interactivity and commercial nature of the website were sufficient to
establish minimum contacts. Id. at 673-74.
Similarly, in Powerhouse, the defendant’s website provided for purchase of the
defendant’s clothing and promotional gear, it prompted users to provide an email address and
sign up for the defendant’s services, and solicited user input so that marketing materials could be
mailed to residents of Texas. Powerhouse, 564 F. Supp. 2d at 679. In that case, this Court found
that the defendant intentionally directed its activities at Texas residents through its website,
availing itself of this forum. Id.
Likewise, in this case, EPL has conducted the minimum contacts necessary for the
establishment of personal jurisdiction. For example, EPL’s online employment application form,
its individualized user accounts, and online purchase of its gift cards are open to East Texans.
The on-line forms provide space where users may enter in any East Texas city or town as their
place of residence, demonstrating that EPL recognizes that its website users and customers reside
in East Texas. EPL’s site solicits potential employees and customers from all over Texas,
including the Eastern District. EPL provides East Texas residents an opportunity to place
catering orders for events occurring near an EPL restaurant and purchase gift cards for relatives
or friends. EPL’s meal planning interface, the accused instrumentality that infringes the patent-

PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 13

in-suit, is fully interactive and invites any user to create unique meals, to receive the nutritional
breakdown for each, and to meet customized eating goals.
For any East Texan who has recently visited any of the EPL restaurants in Texas or
elsewhere or who wishes to place a catering order for events occurring near an EPL restaurant,
such activities on its website are not as far-fetched as EPL likes to assert. It solicits residents of
East Texas through its website, which is anything but passive. EPL, however, has failed to
provide any website analytics data that would conclusively demonstrate that there are in fact no
East Texas website visitors or customers who have purchased gift cards, placed catering orders
through its site, or accessed the meal planning interface. Instead, it simply provides a declaration
with unsupported legal conclusions. See Motion at Dec. of Mark Hardison. Such declarations
are “wholly conclusory” and “devoid of facts” and fail to provide the evidence necessary for the
affiant to reach any proper conclusion. Collins v. Northern Telecom Ltd., 216 F.3d 1042, 1046
(Fed. Cir. 2000); see also Intellectual Science and Tech., Inc. v. Sony Elecs., Inc., 589 F.3d 1179,
1184 (Fed. Cir. 2009).
The only presumption available is that these numbers exist given the fact that EPL is
located in Texas. The Court should then draw all inferences in favor of DietGoal and deny
EPL’s motion. See Silent Drive, 326 F.3d at 1201. Alternatively, DietGoal should be permitted
to conduct expedited discovery from EPL regarding the number of East Texas website visitors
and its other activities that amount to additional minimum contacts with East Texas, such as
purchase of products, advertisements, property, plans of expansion, contracts, employee
residents, and offices in the Eastern District. Without such evidence, DietGoal is simply unable
to provide further evidence to the Court as it is not in control of this information and has no way
of obtaining it.
PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 14

C.

Established Case Law Compels Denial of EPL’s Motion
To support its contention that there is no general personal jurisdiction, EPL relies on QR

Spex, Inc. v. Motorola, Inc., 507 F. Supp. 2d 650 (E.D. Tex. June 18, 2007). In that case,
however, the court’s analysis did not depend on whether minimum contacts were satisfied
through general and specific jurisdiction, but on the “stream of commerce theory.” Id. at 655.
The court chose that analysis because there the scenario was one where “the defendant’s contacts
[were] the result of establishing a distribution network in the forum State for the sale of [its]
products.” Id.
There, the defendant had distributed marketing samples of its products to sales
representatives in Texas and a private investigator for the plaintiff had successfully purchased
defendant’s products over the telephone. 507 F. Supp. 2d at 654 (emphasis added). The
defendant took affirmative steps to divest the court of jurisdiction by making it clear on its
website that its products would not be offered for sale in Texas and asking for the distributed
samples to be returned.

Id.

Unlike the website in this case that constitutes the accused

instrumentality that infringes the patent-in-suit, the existence of defendant’s website in QR Spex
was tangential to the “stream of commerce” analysis for establishing personal jurisdiction and a
“collateral matter” in the court’s analysis of whether jurisdiction was appropriate for two
subsidiaries of the defendant. Id. at 662. Here, EPL has taken no affirmative steps to divest the
Court of jurisdiction and there are no issues of jurisdiction related to its subsidiaries. In addition,
this Court’s analysis does not rest on the “stream of commerce theory” but on the Mink/Zippo
standard.

See Mink, 190 F.3d at 336 (“Courts addressing the issue of whether personal

jurisdiction can be constitutionally exercised over a defendant look to the ‘nature and quality of
commercial activity that an entity conducts over the Internet’”).
PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 15

EPL also relies on Revell v. Lidov, 317 F.3d 467 (5th Cir. 1998), however, Revell
involved a defamation action where the activities did not arise out of solicitation of subscriptions
or applications but by alleged activities posted on an internet bulletin board. Id. at 472. Unlike
the site in Revell, EPL’s entire site is a solicitation tool aimed at luring potential customers
through different avenues, regardless of where they reside.

All of the linked pages on

www.elpolloloco.com solicit purchase of products or customer loyalty in the hopes of leading to
present and future purchases. Its meal planning interface is particularly designed to promote its
menu and encourage future visits to its website.
EPL fails to analyze the Mink middle ground scenario. “In these cases, the exercise of
jurisdiction is determined by examining the level of interactivity and commercial nature of the
exchange of information that occurs on the Web site.” Mink, 190 F.3d at 333. EPL’s website is
highly interactive and commercial in nature. Users do not merely collect passive information,
but instead supply information and receive information specifically tailored to their inputs, such
as building customized meals and receiving unique nutritional information. EPL’s website is
commercial in nature because it offers products for sale, such as gift cards and placement of
catered meals, and entices user to visit EPL restaurants. This interactivity is at least comparable
to the level of interactivity that was sufficient to support jurisdiction in Versata Software in
which the "CarsDirect.com" website allowed customers, including residents of this district, to
compare and price locally available vehicles. Versata Software, Inc. v. Internet Brands, Inc., No.
2:08-CV-313, 2009 BL 209239 (E.D. Tex. Sept. 30, 2009); see also Hsin Ten Enter. USA, Inc. v.
Clark Enters., 138 F. Supp. 2d 449, 456 (S.D.N.Y. 2000) (“Generally, an interactive website
supports a finding of personal jurisdiction over the defendant.”); The Ansel Adams Publishing
Rights Trust v. PRS Media Partners, No. C 10-03740, 2010 U.S. Dist. LEXIS 126791, at *4-5
PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 16

(N.D. Cal. Dec. 1, 2010) (finding venue proper because the defendants advertised posters and
prints through a website that was accessible by consumers in the district in question).
By opening its doors to East Texas residents through the internet on the World Wide Web
in a manner that invokes this Court’s jurisdiction, EPL has chosen to avail itself of the laws of
East Texas. Such knowing and intentional actions support a finding of personal jurisdiction. See
World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980) (“When a corporation
‘purposefully avails itself of the privilege of conducting activities within the forum State,’
[citation omitted], it has clear notice that it is subject to suit there, and can act to alleviate the risk
of burdensome litigation by procuring insurance, passing the expected costs on to customers, or,
if the risks are too great, severing its connection with the State.”).
Thus, the exercise of general and specific jurisdiction under the Mink/Zippo test for a
finding of minimum contacts is well supported given the level of interactivity and the
commercial nature of EPL’s site.
D.

The Exercise of Personal Jurisdiction Over EPL Is in Accordance with Traditional
Notions of Fair Play and Substantial Justice
Once minimum contacts are established, “the interests of the forum and the plaintiff

justify even large burdens on the defendant.” McFadin, 587 F.3d at 764 (finding the defendant
did not meet its burden in disestablishing that the exercise of jurisdiction was fair and
reasonable) (quoting Guidry v United States Tabacco Co., 188 F.3d 619, 628 (5th Cir. 1999)).
Here, EPL cannot meet its high burden of showing that this Court’s exercise of personal
jurisdiction would violate traditional notions of fair play and substantial justice.
It is unlikely that efficient resolution of this case would be disserved by resolution in
Texas as opposed to another state. Given that this case involves patent infringement, subject to

PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

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the same federal laws, this Court’s exercise of jurisdiction will not be unfair or substantially
unjust. See Elecs. for Imaging, 340 F.3d at 1352 (holding that there is “no conflict between the
interest of California and Nevada in furthering their own respective laws, as the same body of
federal patent law would govern the parent invalidity claim irrespective of forum”).
Additionally, East Texas has an interest in protecting its residents’ property rights and
providing a convenient forum for its residents to resolve their disputes. See e.g., McFadin v.
Gerber, 587 F.3d 753, 763 (5th Cir. 2009). DietGoal also has an obvious interest in securing
relief as quickly and as efficiently as possible. Finally, unlike cases that involve large amounts
of physical and immobile evidence, the evidence at issue here likely requires little physical
transportation, if any, and would not present a significant burden on the court in hearing this case
in East Texas.
VI.

SEVERING THE CLAIMS AND TRANSFERRING JURISDICTION WASTES
JUDICIAL RESOURCES
The Plaintiff’s choice of forum “places a significant burden on the movant to show good

cause for the transfer” proposed. In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir.
2008) (en banc) (“Volkswagen II”). To support a finding that another forum would be “clearly
more convenient,” the movant must show that the private and public interest factors favor
transfer. Red River Fiber Optic Corp. v. Verizon Services Corp., 2010 U.S. Dist. LEXIS 27827,
at *5 (E.D. Tex. March 23, 2010); see also QR Spex, Inc. v. Motorola, Inc., 507 F. Supp. 2d 650,
664 (E.D. Tex. 2007) (holding that in a motion to transfer venue under § 1404(a), the moving
party bears a heavy burden of demonstrating why the factors “clearly favor such a change”).
“[U]nless the balance is strongly in favor of the defendant, the plaintiff’s choice of forum should

PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 18

rarely be disturbed.” Volkswagen II, 545 F.3d at 315 (citing Gulf Oil Corp. v. Gilbert, 330 U.S.
501, 508 (1947)).
The private factors, which relate to the convenience of the litigants, include: (1) the
relative ease of access to the sources of proof; (2) the availability of compulsory process to
secure attendance of witnesses; (3) the cost of attendance of willing witnesses; and (4) all other
practical problems that make trial of a case easy, expeditious and inexpensive.

In re

Volkswagen, 371 F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”).
The public factors, which reflect the "public interest in the fair and efficient
administration of justice," consist of: (1) the administrative difficulties flowing from court
congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity
of the forum with the law that will govern the case; and (4) the avoidance of unnecessary
problems of conflict of laws of the application of foreign law. Volkswagen I, 371 F.3d at 203.
A district court has broad discretion in deciding whether or not to order a transfer under
35 U.S.C. § 1404(a). In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc)
(“Volkswagen II”). Here, the Court should exercise its discretion in preserving judicial economy
and deny EPL’s motion as it falls short of meeting its burden.
A.

The Private Interest Factors Weigh Against Transfer
1.

Severing the claims against each defendant and transferring venue wastes
judicial resources and creates unnecessary problems that make trial difficult
and expensive

Practical problems include those that are rationally based on judicial economy. In re
Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009) (“Volkswagen III”).2
Particularly, the existence or creation of duplicative suits in different courts involving the same
2

Because the AIA is not applicable, analysis under Volkswagen III is proper. See supra.

PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

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or similar issues may create practical difficulties that weigh heavily in favor of or against
transfer. Id.
The recent In re Volkswagen decision of the Court of Appeals for the Federal Circuit
found that “the existence of multiple suits involving the same issues is a paramount consideration
when determining whether a transfer is in the interest of justice” and that “a situation in which
two cases involving precisely the same issues are simultaneously pending in different District
Courts leads to wastefulness of time, energy, and money that § 1404(a) was designed to
prevent.” Volkswagen III, 566 F.3d at 1351; see also Ganas, LLC v. Sabre Holdings Corp., Civil
Action No. 2:10-CV-320, Dkt. 405, at 15-16 (E.D. Tex. Oct. 19, 2011) (J. Folsom); SIPCO LLC
v. Amazon.com, Inc., Civil Action No. 2:08-CV-359, Dkt. No. 232 (E.D. Tex. June 4, 2009).
The Defendants’ collective motions are not simple requests for transfer to a more
convenient venue. Here, the Defendants together seek to create twelve separate actions across at
least seven judicial districts3 in addition to the one in this District with the remaining nonmoving Defendants. These additional suits that would be generated involve the same patent, the
same basic technology and accused products, and thus many of the same issues, which
Volkswagen III indicates would be directly contrary to the purposes of § 1404(a).

EPL’s

arguments regarding the AIA are inapposite as that statute does not apply in this case.4 This
factor therefore weighs heavily against transfer. Volkswagen III, 566 F.3d at 1351; SynQor, Inc.
v. Ericsson Inc., No. 2:11-cv-00054, slip op. 9, 12 (E.D. Tex. Feb. 6, 2012) (Folsom, J.) (denying
defendant’s motion to transfer venue because “judicial economy weighs heavily against transfer”

3

Although Defendants Taco Time, Tim Hortons, and Rubio’s do not move to transfer, their
dismissal and DietGoals’ subsequent pursuit of its claims in Washington, Delaware, and
California respectively adds to the number of unnecessary suits that will be created in this case.
4
 See supra and DietGoal’s Responses to other Defendants’ motions to dismiss regarding joinder. 
PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

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and “divorcing related cases in [the manner suggested by defendants] would be directly contrary
to the purposes of Section 1404(a)”).
2.

The other private factors are neutral, making the totality of the private
factors weigh against transfer

As far as the availability of the compulsory process to secure the attendance of witnesses
is concerned, this “factor weigh[s] the heaviest in favor of transfer when a transferee venue is
said to have ‘absolute subpoena power.’” Eolas Technologies, Inc. v. Adobe Systems, Inc., Civil
Action No. 6:09-CV-446, 2010 U.S. Dist. LEXIS 104125, at *24 (E.D. Tex. Sept. 28, 2010)
(citing Volkswagen II, 545 F.3d at 316). “Absolute subpoena power” is subpoena power for both
depositions and trial. In re Hoffman-La Roche Inc., 587 F.3d at 1338. Witnesses such as the
prosecuting attorney, the principals of DietGoal, and the inventor of the ‘516 Patent reside on the
East Coast, meaning that neither this District nor the proposed transferee districts have absolute
subpoena power over these witnesses - making this factor neutral. See Eolas, 2010 U.S. Dist.
LEXIS 104125 at *24.
Additionally, the cost of attendance of willing witnesses cannot be simply analyzed by
applying a rigid 100 mile radius rule. Eolas, 2010 U.S. Dist. LEXIS 104125, at *26 (citing In re
Genentech, 566 F.3d at 1344). “When a particular witness will be required to travel a significant
distance no matter where they testify, then that witness is discounted for purposes of the ‘100
mile rule’ analysis.” Id. DietGoal’s witnesses reside on the East Coast and would have to travel
a greater distance to California then to the Eastern District of Texas. Additionally, as the time
for trial has not yet been set, there is no degree of certainty that the witnesses Defendant has
identified will all continue to reside in their present residence.

PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 21

Moreover, although access to the source of proof must be considered, the reality of this
case is that the accused infringing products are all websites and most if not all relevant
documents will be in electronic form that can be transferred with ease. Thus, all of these factors
are neutral, making the totality of the private factors weigh against transfer.
B.

The Totality of the Applicable Public Interest Factors Weigh Against Transfer5
1.

The amount of court congestion in both Districts is the same

Contrary to EPL’s contention, this factor is neutral.6 The difference in median time for
cases to proceed to resolution in the Eastern District of Texas and the Central District of
California is only four months. Compare Exhibit B, Court Statistics in the Eastern District of
Texas, with Exhibit C, Court Statistics in the Central District of California.
2.

The Eastern District has a localized interest that should be decided at home

The Defendant makes much ado about the length of time DietGoal has been in business
prior to filing of this case. However, there is no “time-based litmus test” for how long a plaintiff
must reside in a particular district before it brings suit there. See Eolas, 2010 U.S. Dist. LEXIS
104125 at *22. Although DietGoal is newly incorporated, there is no indication that its business
will not or cannot grow and mature here.
In patent litigation, the injury occurs at the place where “the infringing activity directly
impacts on the interests of the patentee.” Trintec, 395 F.3d at 1280. As EPL has conducted
infringing activities in the Eastern District of Texas through its website, the residents of this
District have an interest in determining the outcome of this litigation. EPL claims that California

5

  The “avoidance of unnecessary problems of conflict of laws of the application of foreign law”

is not applicable to this case as only the Federal Rules apply, and Defendants have not identified
it as an issue. 
6
DietGoal reserves the right to further investigate this factor and present evidence regarding the
same.
PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 22

has a greater interest because its principal place of business is in California. Motion at 16. By
this logic, only citizens of a corporation’s home residence should ever determine whether that
corporation’s tortuous acts conducted elsewhere create any liability. This argument ignores all
venue rules. See, e.g., 28 U.S.C. 1391(a), (b), (e), (f), and (g) (venue is proper “in a judicial
district in which a substantial part of the events or omissions giving rise to the claim occurred”).
As the injury in this patent case has occurred here, the citizens here as well as DietGoal have an
interest in the outcome of the case.
3.

The Eastern District of Texas is more familiar with the laws that will govern
this case

This Court is much better suited to manage a large complex patent litigation matter than
that of the Central District of California. An obvious indicator as to a proposed forum’s ability
to deal with patent cases is the existence of local patent rules. Unlike this District, the Central
District of California has no local rules dealing specifically with patent matters. This Forum has
well developed rules that define specialized procedures and timelines specific to patent suits as
compared to general civil matters that do not deal with the same complex set of issues, such as a
Markman hearing and all of its associated procedures. These specialized rules allow for efficient
and predictable management of patent cases that benefit all parties and reflect this District’s
familiarity with the laws that will govern this case.
VII.

CONCLUSION

For the reasons stated above, the Court should deny Defendant EPL’s motion to sever
and in addition or in the alternative to dismiss for improper venue or transfer to the Central
District of California.

PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 23

Dated: March 7, 2012

Respectfully submitted,
BUETHER JOE & CARPENTER, LLC

By: /s/ Niky Bukovcan
Christopher M. Joe (Lead Counsel)
State Bar No. 00787770
[e-mail]
Eric W. Buether
State Bar No. 03316880
[e-mail]
Brian A. Carpenter
State Bar No. 03840600
[e-mail]
Niky Bukovcan
WA State Bar No. 39403
[e-mail]
Mark D. Perantie
State Bar No. 24053647
[e-mail]
1700 Pacific Avenue
Suite 2390
Dallas, Texas 75201
Telephone: [phone]
Facsimile:
[phone]
ATTORNEYS FOR PLAINTIFF
DIETGOAL INNOVATIONS LLC

CERTIFICATE OF SERVICE
The undersigned hereby certifies that all counsel of record who are deemed to have
consented to electronic service are being served with a copy of this document via the Court’s
CM/ECF system per Local Rule CV-5(a) on this 7th day of March, 2012. Any other counsel of
record will be served by facsimile transmission and first class mail.
/s/ Niky Bukovcan
Niky Bukovcan

PLAINTIFF DIETGOAL INNOVATIONS LLC’S RESPONSE IN OPPOSITION TO
DEFENDANT EL POLLO LOCO, INC.’S MOTION TO SEVER AND
IN ADDITION OR IN THE ALTERNATIVE TO DISMISS FOR IMPROPER
VENUE OR TRANSFER TO THE CENTRAL DISTRICT OF CALIFORNIA

Page 24