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Case 1:12-cv-00963-GMS Document 23 Filed 01/11/13 Page 1 of 3 PageID #: 429

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE ADVANCED DYNAMIC INTERFACES, L.L.C., )
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Plaintiff,
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C.A. No. 12-cv-963 (GMS)

ADERAS INC., et al.,

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Defendants. ______________________________))
ORDER

At Wilmington, this 1l... day of January, 2013, having considered Oracle Corporation and Oracle America, Inc.'s (collectively, "Oracle") Motion to Intervene and Stay (D.I. 12), the parties' written submissions in connection with this motion (D.I. 13; D.I. 17; D.I. 20), and the applicable law; IT IS HEREBY ORDERED that Oracle's Motion to Intervene and Stay (D.I. 12) is GRANTED, such that the above-captioned matter is STAYED pending disposition of Oracle's declaratory judgment action, Oracle Corporation and Oracle America, Inc. v. Advanced

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Dynamic Interfaces, L.L.C., 12-cv-1154 (GMS). The court finds that Oracle has established the
four elements Federal Rule of Civil Procedure 24(a)(2) requires for a party to intervene as of right in an action 1 and, further, that granting a stay will serve the interests of judicial efficiency and efficient resolution of the parties' dispute 2 ;

The Third Circuit has established that, pursuant to Federal Rule of Civil Procedure 24(a)(2), a party may intervene in an action as of right if that party can establish that: (I) its application for leave to intervene was timely; (2) it has a sufficient interest in the litigation; (3) there is a threat that that interest will be impaired or affected, as a practical matter, by the disposition of the action; and (4) there is inadequate representation of this interest by the existing parties in the litigation. See Kleissler v. US. Forest Serv., 157 F.3d 964, 969 (3d Cir. 1998). Here, the court finds that Oracle has demonstrated each element and, therefore, has met the intervention requirements of Rule 24(a).

Case 1:12-cv-00963-GMS Document 23 Filed 01/11/13 Page 2 of 3 PageID #: 430

Specifically, and with regard to the first element, Advanced Dynamic Interfaces, L.L.C. ("ADI") filed its Complaint in the above-captioned matter on July 20, 2012. (D.I. 1.) Oracle maintains that it filed its declaratory action in I 2-cv-1 I 54 against ADI after learning of this action, investigating the matter, and receiving requests for indemnification from its customers that ADI named as defendants. (D.I. 13 at 4.) Oracle filed its suit on September 18, 2012, before a scheduling conference or discovery had been initiated in the instant matter. (!d) In light of this timeframe, the court finds that Oracle's Motion to Intervene was, in fact, timely. See Honeywell Int'l Inc. v. Audiovox Comms. Corp., 04-cv-1 137, 2005 WL 2465898, at *4 (D. Del. May 18, 2005) (finding the filing of a motion to intervene to be timely where "discovery ha[d] not even begun in the case and case management issues [were] only [then] being addressed"). Second, the court concludes that Oracle has also demonstrated a compelling interest in this litigation. Specifically, and as Oracle details in its submissions, it is the designer, developer, and licensor of the accused APEX products at issue in this action. As a result, an adverse finding in this action would inevitably impact Oracle's sales and services of its APEX products to customers involved as defendants in this suit as well as its sale and service of these products generally. In addition, Oracle also maintains an immediate financial interest in this litigation and the requested stay because it has received indemnification requests in connection with this action and, therefore, will have a direct and/or near-term economic interest in the litigation. See, e.g., WS Packaging Grp., Inc. v. Global Commerce Grp., L.L.C., 505 F. Supp. 2d 561 (E.D. Wise. 2007) (concluding that a manufacturer had a legal interest in a case brought against its customers because that manufacturer had an obligation to indemnify); Monolithic Power Sys., Inc. v. 02 Micro Int'l Ltd, 2008 WL 3266647, at 3 (N.D. Cal. Aug. 6, 2008) (fmding a legal interest where the manufacturer was "be[ing] forced to indemnify its customers for losses they would incur in an infringement suit brought against them"). In view of the foregoing, the court concludes that Oracle has both a legal and financial interest in this litigation and, therefore, meets this requirement of Rule 24. Third, Oracle has likewise demonstrated that its identified interests would be impaired or affected by the disposition of this action. Namely, Oracle's APEX products are at issue in the litigation and, as a result, the outcome of this action will directly impact Oracle legally and/or economically. Oracle also argues that the specific allegations in ADI's Complaint "regarding APEX products constitute an implicit assertion that Oracle has indirectly infringed the [p]atents-in-suit." (D.I. 13 at 6.) To this end, API's claims against the above-captioned defendants "may create an Article III controversy between [the] patentee" and Oracle. See Arris Grp., Inc. v. British Telecomms. PLC, 639 F.3d 1368 (Fed. Cir. 201 I) ("[W]here a patent holder accuses customers of direct infringement based on the sale or use of a supplier's equipment, the supplier has standing to commence a declaratory judgment action if ... there is a controversy between the patentee and the supplier as to the supplier's liability for induced or contributory infringement based on the alleged acts of direct infringement by its customers.") Thus, it is clear to the court that Oracle has both legal and economic interests in this action that will be affected by its disposition because of the litigation's effect on Oracle's sales to customers and its implicit assertion that Oracle has indirectly infringed the patents-in-suit, creating a justiciable controversy between the parties. Finally, the court is persuaded by Oracle's assertion that its interests are not adequately represented by the existing parties. In particular, the court finds convincing Oracle's contentions that: (I) its familiarity with the APEX products and their development surpasses that of any other defendant named in this action because Oracle was the sole designer and developer of the products; (2) it possesses the most relevant information about the structure and operation of the accused products; and (3) it may be able to present a defense in support of its interests that could not be introduced by the named defendants. See, e.g., Kleissler, 157 F.3d at 974 (noting that the "presence of intervenors may serve to prevent errors from creeping into the proceedings [and] clarify some issues"); Delphi Corp. v. Automotive Tech. Int'/, Inc., No. 08-11048, 2008 WL 2941116, at *5 (E.D. Mich. Jul. 25, 2008) (finding that the "manufacturer controlled the design and production and therefore is in the best position to defend its own products"). The court agrees that Oracle's superior understanding of the APEX products and greater access to relevant documents and individuals may result in Oracle's interests being inadequately represented were it not allowed to intervene. See Kleissler, 157 F.3d at 974 (finding that an intervenor need only show that representation may be inadequate not that it will, in fact, be inadequate). 2 It is well established that, when considering a motion to stay, courts should consider: "(I) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues and trial of the case; (3) whether discovery is complete; and (4) whether a trial date has been set." Honeywell, 2005 WL 2465898, at *2. Here, as noted above, the court has not yet held a scheduling conference in this matter, a trial date has not been set, and discovery has not yet commenced. Therefore, the court finds that staying this action at this time will not unduly prejudice or present a clear tactical disadvantage to either side.

Case 1:12-cv-00963-GMS Document 23 Filed 01/11/13 Page 3 of 3 PageID #: 431

IT IS HEREBY FURTHER ORDERED that the amended caption in this action shall read as follows:

___________________________)

) ) ) Intervenors, ) ) ) v. ) ADVANCED DYNAMIC INTERFACES, L.L.C., ) ) ) Plaintiff, ) V. ) ) ADERAS INC., et al., ) ) ) Defendants.

ORACLE CORPORATION and ORACLE AMERICA, INC.,

C.A. No. 12-cv-963 (GMS)

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Moreover, and as Oracle correctly notes, a court may stay a first-filed action during the pendency of a declaratory judgment action where that court concludes that "appropriate circumstances" justify such a departure. See Pragmatus v. Telecom, L.L.C. v. Advanced Store Co., No. 12-088, 2012 WL 2803695 (D. Del. July 10, 2012); see also TuffTorq Corp. v. Hydro-Gear Ltd P'ship, 882 F. Supp. 359, 364 (D. Del. 1994) ("District courts have always had discretion given appropriate circumstances justifying departure from the first-filed rule."). The court finds such circumstances present in this case. Specifically, the court concludes that a stay in this matter is appropriate because: (1) the stay will likely simplify the issues for trial, particularly in light of the fact that the defendants named in this action have agreed to be bound by the court's decision in the 12-cv-1154 action (D.I. 20 at 3-4); and (2) for reasons of judicial efficiency and efficient resolution of this dispute, granting a stay in the abovecaptioned action will allow the parties at the center of this dispute and those in the best position to litigate it to proceed without unnecessarily involving nineteen customer defendants at this stage. With regard to the latter rationale, the staying of this action will streamline these proceedings and will not prejudice ADI because Oracle's declaratory judgment action will allow it to continue to pursue its rights and interests with respect to the Oracle APEX software. In view of the foregoing the court finds that the imposition of a stay in this matter will serve the interests of judicial efficiency and efficient resolution of the parties' dispute.