IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

SAFE STORAGE LLC, ) )

Plaintiff, ) )

v. ) Civil Action No. 12-1624-GMS )

DELL INC., ) )

Defendant. )

SAFE STORAGE LLC, ) )

Plaintiff, ) )

v. ) Civil Action No. 12-1625-GMS )

DOT HILL SYSTEMS CORP., ) )

Defendant. )

SAFE STORAGE LLC, ) )

Plaintiff, ) )

v. ) Civil Action No. 12-1626-GMS )

HEWLETT-PACKARD COMPANY and ) 3PAR, INC., )

) Defendants. )

SAFE STORAGE LLC, ) )

Plaintiff, ) )

V. ) Civil Action No. 12-1627-GMS )

HITACHI DATA SYSTEMS ) CORPORATION, )

) Defendant. )

SAFE STORAGE LLC, ) )

Plaintiff, ) )

V. ) Civil Action No. 12-1628-GMS )

NETAPP, INC., ) )

Defendant. )

SAFE STORAGE LLC, ) )

Plaintiff, ) )

v. ) Civil Action No. 12-1629-GMS )

SILICON GRAPHICS INTERNATIONAL ) CORP., )

) Defendant. )

SAFE STORAGE LLC, ) )

Plaintiff, ) )

v. ) Civil Action No. 13-926-GMS )

CISCO SYSTEMS, INC., ) )

Defendant. )

SAFE STORAGE LLC, ) )

Plaintiff, ) )

v. ) Civil Action No. 13-928-GMS )

VMWARE INC., ) )

Defendant. )

SAFE STORAGE LLC, ) )

Plaintiff, ) )

v. ) Civil Action No. 13-929-GMS )

INFORTREND CORPORATION, ) )

Defendant. )

SAFE STORAGE LLC, ) )

Plaintiff, ) )

V. ) Civil Action No. 13-931-GMS )

NEXSAN CORPORATION, ) )

Defendant. )

SAFE STORAGE LLC, ) )

Plaintiff, ) )

v. ) Civil Action No. 13-932-GMS )

OVERLAND STORAGE, INC., ) )

Defendant. )

SAFE STORAGE LLC, ) )

Plaintiff, ) )

v. ) Civil Action No. 13-1089-GMS )

ORACLE AMERICA, INC., ) )

Defendant. )

SAFE STORAGE LLC, ) )

Plaintiff, ) )

v. ) Civil Action No. 13-1090-GMS )

ATTO TECHNOLOGY, INC., HUA WEI ) TECHNOLOGIES CO., LTD., HUA WEI ) TECHNOLOGIES USA INC. and HUA WEI ) ENTERPRISE USA INC., )

) Defendants. )

SAFE STORAGE LLC, ) )

Plaintiff, ) )

v. ) Civil Action No. 13-1150-GMS )

EMULEX CORPORATION (OF ) DELA WARE) and EMULEX ) CORPORATION (OF CALIFORNIA), )

) Defendants. )

SAFE STORAGE LLC, ) )

Plaintiff, ) )

v. ) Civil Action No. 13-1151-GMS )

INTERNATIONAL BUSINESS MACHINES ) CORP., )

) Defendant. )

ORDER

WHEREAS, presently before the court are the requests from the majority of the above-

captioned defendants to stay patent litigation proceedings pending the results of inter partes

review ("IPR") by the Patent Trial and Appeal Board ("PTAB"), at the U.S. Patent and

Trademark Office ("USPTO"); 1

WHEREAS, the plaintiff Safe Storage LLC ("Safe Storage") has alleged infringement

against each of the above-captioned defendants of U.S. Patent No. 6,978,346 ("the '346 Patent");

WHEREAS, on December 11, 2014, the PTAB instituted IPR of all nine claims of the

'346 Patent;2

WHEREAS, the court having considered the parties' positions as set forth in their papers,

as well as the applicable law;

IT IS HEREBY ORDERED THAT:

1. The pending motions seeking a stay of proceedings3 are GRANTED;4

1 All but four of the above-captioned defendants filed a motion to stay or requested to join an already pending motion. The four defendants who do not seek a stay of their cases are: Silicon Graphics International Corp. (C.A. No. 12-1629-GMS); Infortrend Corporation (C.A. No. 13-929-GMS); Nexsan Corporation (C.A. No. 13-931-GMS); and Emulex Corporation et al. (C.A. No. 13-1150-GMS) (collectively, "the non-moving Defendants"). These four defendants have filed nothing in favor or against the pending motions.

2 Previously, in March 2014, the PTAB had initiated IPR proceedings for only seven of the nine claims of the '346 Patent. Following an additional petition for review filed by defendants VMWare Inc., International Business Machines Corporation, and Oracle America, Inc., the PT AB instituted IPR over all nine claims.

3 (C.A. No. 12-1624-GMS, D.I. 29); (C.A. No. 12-1625-GMS, D.I. 27); (C.A. No. 12-1626-GMS, D.I. 34); (C.A. No. 12-1628-GMS, D.I. 28); (C.A. No. 13-928-GMS, D.I. 28); (C.A. 13-932-GMS, D.I. 19); (C.A. 13-1089-GMS, D.I. 30); (C.A. 13-1090-GMS, D.I. 25, 26); (C.A. 13-1151-GMS, D.I. 26).

4 It is well established that the decision to stay an action lies within the sound discretion of the trial court. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988); Cost Bros. Inc. v. Travelers Indemnity Co., 760 F.2d 58, 60 (3d Cir. 1985); First Am. Title Ins. Co. v. MacLaren, L.L.C., No. 10-363-GMS, 2012 WL 769601, at *4 (D. Del. Mar. 9, 2012). In the patent litigation arena, this power includes "the authority to order a stay pending conclusion ofa PTO [review]." Ethicon, 849 F.2d at 1426-27. Central to the rationale providing for such discretion is that of the "court's inherent power to conserve judicial resources by controlling its own docket." Cost Bros. Inc., 760 F.2d at 60-61 (citation omitted); see also Cheyney State Coll. Faculty v. Hufstedler, 703 F.2d 732, 737-38 (3d Cir. 1983) (citing Landis v. N. Am. Co., 299 U.S. 248, 254-55 (1936)).

In the IPR context-unlike for "covered business method" ("CBM") review-the factors for the district court's consideration when faced with a stay request are not statutorily defined. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, § 18(b), 125 Stat. 284, 331 (2011) (identifying stay factors for district courts for CBM review). Nonetheless, the parties are in agreement that the same factors used in non-IPR settings should govern the court's stay analysis:

2. Each of the above-captioned cases are ST A YED pending resolution of the

inter partes review of U.S. Patent No. 6,978,346.

Dated: January f~, 2015

(I) whether the granting of a stay would cause the non-moving party to suffer undue prejudice from any delay or allow the moving party to gain a clear tactical advantage over the non-moving party; (2) whether a stay will simplify the issues for trial; and (3) whether discovery is complete and a trial date set.

Bos. Scientific Corp. v. Cordis Corp., 777 F. Supp. 2d 783, 788 (D. Del. 2011); see also First Am. Title Ins., 2012 WL 769601, at *4.

The court agrees with the moving defendants that each of the factors weighs in favor of staying proceedings, especially in light of the PTAB's recent decision to institute review of all of the claims of the '346 Patent. First, the court can discern no prejudice or tactical disadvantage that Safe Storage would suffer as a result of a stay. Although Safe Storage would undoubtedly prefer a quicker resolution to a slower one, there is no suggestion that time is particularly important. See Neste Oil OYJ v. Dynamic Fuels, LLC, No. 12-1744-GMS, 2013 WL 3353984, at *2 (D. Del. July 2, 2013) ("The mere potential for delay ... is insufficient to establish undue prejudice."). Safe Storage is a non-practicing entity, without competing products, and has not sought an injunction against the defendants. Although Safe Storage raises concerns about prolonged litigation reducing the value of its patents as licensing assets, see Walker Digital, LLC v. Google, Inc., No. 11-318-LPS, 2014 WL 2880474, at *1 (D. Del. June 24, 2014), the court finds this anxiety to be overstated. IPR proceedings are moving along swiftly, while practically no progress has yet been made in the cases before the court. The court finds that the prejudice to Safe Storage, if any, would be minimal and not undue.

Second, the court agrees that staying proceedings pending resolution of the PTAB' s review would greatly simplify the issues for trial. Safe Storage's initial objection that not all of the claims were under review has been rendered moot now that the PTAB instituted review over all nine claims in December 2014. Questions of patent validity will certainly be narrowed or eliminated entirely, and each of the moving defendants (whether by statute or by agreement) is estopped from rearguing questions addressed by the PT AB. Even though the four non-moving Defendants are not similarly estopped, the court is convinced that the IPR findings will simplify some, if not large, aspects of those cases as well. Safe Storage's contention that outstanding issues (such as affirmative defenses) will remain and will require adjudication does not counsel against imposing a stay. See Neste Oil OYJ, 2013 WL 3353984, at *5 ("[W]hile the court recognizes that this case likely presents certain questions that simply cannot be addressed through inter partes review, it notes that the 'issue simplification' factor does not require complete overlap.").

Finally, the parties do not dispute that these cases are still in their relative infancies. The court has not yet entered a schedule for any case-thus discovery is not terminated and no trial date is set. The early stage of litigation favors entering a stay.

Although they do not affirmatively seek a stay, the court finds that the non-moving Defendants' cases should be stayed as well. They have put forward no objections, and judicial efficiency favors a stay of all of the cases, rather than allowing these four to go forward, perhaps unnecessarily. Thus, the court sua sponte imposes a stay of the non-moving Defendants' cases. See Tatum v. Chrysler Grp., LLC, No. 10-4269(ES)(CLW), 2011 WL 6303290, at *3 (D.N.J. Dec. 16, 2011) ("[T]he Court stays the action sua sponte for purposes of avoiding potentially duplicative litigation and discovery."); First Nonprofit Ins. Co. v. Alexander, No. 09-465, 2009 WL 2256473, at *4 (E.D. Pa. July 27, 2009) ("[T]he Court may order ... a stay sua sponte.").

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