IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE

SAFE STORAGE LLC,
Plaintiff,
v.
DELL INC.,
Defendant.
SAFE STORAGE LLC,
Plaintiff,
v.
DOT HILL SYSTEMS CORP.,
Defendant.
SAFE STORAGE LLC,
Plaintiff,
v.
HEWLETT-PACKARD COMPANY and
3PAR, INC.,
Defendants.
SAFE STORAGE LLC,
Plaintiff,
V.

HITACHI DATA SYSTEMS

CORPORATION,
Defendant.

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Civil Action No. 12-1624-GMS

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Civil Action No. 12-1625-GMS

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Civil Action No. 12-1626-GMS

Civil Action No. 12-1627-GMS

SAFE STORAGE LLC,

Plaintiff,
V.

NETAPP, INC.,
Defendant.
SAFE STORAGE LLC,
Plaintiff,
v.
SILICON GRAPHICS INTERNATIONAL
CORP.,
Defendant.
SAFE STORAGE LLC,
Plaintiff,
v.
CISCO SYSTEMS, INC.,
Defendant.
SAFE STORAGE LLC,
Plaintiff,
v.
VMWARE INC.,
Defendant.

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Civil Action No. 12-1628-GMS

Civil Action No. 12-1629-GMS

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Civil Action No. 13-926-GMS

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Civil Action No. 13-928-GMS

SAFE STORAGE LLC,

Plaintiff,
v.
INFORTREND CORPORATION,
Defendant.
SAFE STORAGE LLC,
Plaintiff,
V.

NEXSAN CORPORATION,
Defendant.
SAFE STORAGE LLC,
Plaintiff,
v.
OVERLAND STORAGE, INC.,
Defendant.
SAFE STORAGE LLC,
Plaintiff,
v.
ORACLE AMERICA, INC.,
Defendant.

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Civil Action No. 13-929-GMS

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Civil Action No. 13-931-GMS

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Civil Action No. 13-932-GMS

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Civil Action No. 13-1089-GMS

SAFE STORAGE LLC,

Plaintiff,
v.
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.
EMULEX CORPORATION (OF
DELAWARE) and EMULEX
CORPORATION (OF CALIFORNIA),
Defendants.
SAFE STORAGE LLC,
Plaintiff,
v.
INTERNATIONAL BUSINESS MACHINES
CORP.,
Defendant.

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Civil Action No. 13-1090-GMS

Civil Action No. 13-1150-GMS

Civil Action No. 13-1151-GMS

ORDER

WHEREAS, presently before the court are the requests from the majority of the abovecaptioned 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. 13-931GMS); 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 PTAB 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. 13-1089GMS, 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 STA 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 PTAB. 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.").