Seagate argues that this Court does not have the power to order the requested relief. The Federal Circuit has previously found that a district court exceeded its authority when it ordered parties to disclose information to the PTO in the context of a reexamination proceeding. Emerson Elec. Co. v. Davoil, Inc., 88 F.3d 1051, 1054 (Fed. Cir. 1996); see also In re Cont'l Gen. Tire, Inc., 81 F.3d 1089, 1093 (Fed. Cir. 1996) (compelling a district court to vacate an order requiring an alleged infringer in a patent suit to file a request for reexamination with the PTO). In Emerson, the Federal Circuit said that the district court is "not authorize[d] . . . to direct that [plaintiff] must include [defendant's] documents in its filings in the [PTO] in the reexamination proceedings."
However, the statute notwithstanding, it is well established that courts also have inherent power to issue stays pending reexamination. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988) ("Courts have inherent power to manage their dockets and stay proceedings, including the authority to order a stay pending conclusion of a PTO reexamination.") (internal citation omitted); Pass Seymour, Inc. v. Hubbell, Inc., 532 F.Supp.2d 418, 435 (N.D.N.Y. 2007); Anascape, Ltd. v. Microsoft Corp., 475 F.Supp.2d 612, 615 (E.D.Tex. 2007); see also Emerson Elec. Co. v. Davoil, Inc., 88 F.3d 1051, 1054 (Fed. Cir. 1996). The plaintiff argues that recognizing inherent authority to issue a stay is unwise in light of the limited nature of the statutory stay provision.
The Court will not unseal the Order and require Medicis to provide it to the PTO because to do so would require the Court to improperly involve itself in the necessarily ex parte process of the PTO's reexamination. As the Federal Circuit has found, "[a] party's choice of what, if anything, to file with the patent office in a reexamination proceeding should remain undisturbed by the courts." Emerson Elec. Co. v. Davoil, Inc., 88 F.3d 1051, 1054 (Fed. Cir. 1996) (internal quotations omitted) (holding that district court exceeded its authority when it required patentee, as condition of stay of patent infringement suit, to file alleged infringer's documents together with its own responses to reexamination request). While noting the importance of candor and good faith during reexamination, the Court will refrain from involving itself in the reexamination proceeding by implying that Medicis should submit the Court's Order to the PTO. The Court notes, however, that if Medicis elects to provide the Order to the PTO, the Court will unseal the Order upon the filing of a request by Medicis.
Defendant's second proposed condition would require the Court improperly to involve itself in the necessarily ex parte process of the PTO's reexamination. As the Federal Circuit has found, "[a] party's choice of what, if anything, to file with the patent office in a reexamination proceeding should remain undisturbed by the courts." Emerson Elec. Co. v. Davoil, Inc., 88 F.3d 1051, 1054 (Fed. Cir. 1996) (internal quotations omitted) (holding that a district court could not require a plaintiff, as a condition of a stay of a patent suit, to file the defendant's documents with the PTO together with its own). While noting the importance of candor and good faith during reexamination, the Court will refrain from involving itself in the reexamination proceeding by evaluating the substance of Plaintiffs' submissions to the PTO. With regard to Defendant's third proposed condition, Plaintiffs have indicated that they have already produced all prior art of which they are aware. Plaintiffs also indicate that should they learn of additional prior art, they will disclose this to the PTO and to Defendant, as they are required to serve Defendant with copies of all documents that they file during the reexamination process.