Here, however, there is intervening relevant Supreme Court authority which, we think, would lead the Second Circuit to follow other circuits which have held that the Octane standard applies to the Lanham Act. See Badalamenti v. Dunham's, Inc. , 896 F.2d 1359, 1362 (Fed. Cir. 1990) ("[I]f the regional circuit court has not spoken, we must predict how that court would decide the issue...."). The Second Circuit in Penshurst Trading Inc. v. Zodax L.P., 652 Fed.Appx. 10 (2d Cir. 2016), held that "[w]e have not yet decided whether [the Octane ] rule applies in the context of the Lanham Act, but we need not do so here ... [because] we [would] affirm the district court's denial of attorney's fees" under either Octane or Louis Vuitton.

This case presents a procedural question not unique to patent law; thus, the law of the Ninth Circuit applies. See Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1362, 13 USPQ2d 1967, 1970 (Fed. Cir. 1990); Panduit Corp. v. All States Plastic Mfg. Co., 744 F.2d 1564, 1574-75, 223 USPQ 465, 471 (Fed. Cir. 1984). In reviewing Rule 37 sanctions, the question is whether the district court abused its discretion.

First, an award of fees is designed to "to compensate the prevailing party for its monetary outlays in the prosecution or defense of the suit," Central Soya Co. v. Geo. A. Hormel Co., 723 F.2d 1573, 1578 (Fed. Cir. 1983), "where it would be grossly unjust that the winner be left to bear the burden of his own counsel which prevailing litigants normally bear." Badalamenti v. Dunham's Inc., 896 F.2d 1359, 1364 (Fed. Cir. 1990) (quotingJ.P. Stevens Co. v. Lex Tex Ltd., 822 F.2d 1047, 1052 (Fed. Cir. 1987)) (emphasis in original). Additionally, § 285 is designed to deter parties from bringing or prosecuting bad faith litigation, see Mathis v. Spears, 857 F.2d 749, 754 (Fed. Cir. 1988).

First, it "compensate[s] the prevailing party for its monetary outlays in the prosecution or defense of the suit," Central Soya Co. v. Geo. A. Hormel Co., 723 F.2d 1573, 1578 (Fed. Cir. 1983), "where it would be grossly unjust that the winner be left to bear the burden of his own counsel which prevailing litigants normally bear." Badalamenti v. Dunham's Inc., 896 F.2d 1359, 1364 (Fed. Cir. 1990) (quoting J.P. Stevens Co. v. Lex Tex Ltd., 822 F.2d 1047, 1052 (Fed. Cir. 1987)) (emphasis in original). Second, and of equal, if not greater, importance, the sanction serves to deter parties from bringing or prosecuting bad faith litigation, see Mathis v. Spears, 857 F.2d 749, 754 (Fed. Cir. 1988).

In order for a case to be considered "exceptional," "[t]here must be some finding of unfairness, bad faith, or inequitable conduct on the part of the unsuccessful patentee." Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1364-1365 (Fed. Cir.), cert. denied, 498 U.S. 851, 111 S.Ct. 142, 112 L.Ed.2d 109 (1990) (quoting Stevenson v. Sears, Roebuck Co., 713 F.2d 705, 713 (Fed. Cir. 1983)). In the memorandum and order filed June 15, 1992 (Doc. 1162), the court held that Ogilvie acted in bad faith, thereby entitling Manildra to a fees award under 35 U.S.C. § 285.

Section 285 is meant to "provide discretion where it would be grossly unjust that the winner be left to bear the burden of his own counsel which prevailing litigants normally bear." Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1364-65 (Fed. Cir.), cert. denied, — U.S., 111 S.Ct. 142, 112 L.Ed.2d 109 (1990) (quoting J.P. Stevens Co., Inc. v. Lex Tex Ltd., Inc., 822 F.2d 1047, 1052 (Fed. Cir. 1987) (emphasis in original)). There must be some finding of unfairness, bad faith or inequitable conduct on the part of the unsuccessful patentees.