EMS argues that the district court issued no factual findings as to whether this was an "exceptional case" and thus a remand was necessary to allow the court to make the requisite findings of fact and to decide whether an award of attorney fees was warranted. In support of its argument, EMS relies upon our decisions in Badalamenti v. Dunham's Inc., 896 F.2d 1359, 13 USPQ2d 1967 (Fed.Cir.1990), Fromson v. Western Litho Plate and Supply Co., 853 F.2d 1568, 7 USPQ2d 1606 (Fed.Cir.1988), and S.C. Johnson & Sons, Inc. v. Carter-Wallace, Inc., 781 F.2d 198, 228 USPQ 367 (Fed.Cir.1986), in which remand was deemed necessary for further "exceptional case" findings. Those cases, however, are distinguishable from the instant case.

An abuse of discretion occurs when (1) the district court's decision is based on an erroneous conclusion of law, (2) the district court's findings are clearly erroneous, or (3) the district court's decision is clearly unreasonable, arbitrary or fanciful. Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1362 (Fed. Cir. 1990) (applying 6th Circuit law) (This case lists four facts; however, two of the factors are substantially the same.), cert. denied, 498 U.S. 851, 111 S.Ct. 142, 112 L.Ed.2d 109 (1990). In deciding whether the district court acted unreasonably, arbitrarily or fancifully, this court has announced several factors that it should consider when deciding whether the district court abused its discretion by imposing sanctions.

Windsurfing had the burden of proving by clear and convincing evidence that BIC's infringement was willful and that the case was exceptional. State Indus., 883 F.2d at 1581; Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1364, 13 USPQ2d 1967, 1972 (Fed. Cir.), cert. denied sub. nom., Hyde Athletic Indus., Inc. v. Badalamenti, 498 U.S. 851, 111 S.Ct. 142, 112 L.Ed.2d 109 (1990). After reviewing the record, this court finds no clear error in the district court's findings of nonwillfulness and nonexceptionality.

Id. Similarly, in Badalamenti v. Dunhams, Inc., 896 F.2d 1359, 1364-65, 13 USPQ2d 1967, 1971-72 (Fed. Cir. 1990), because the district court was silent on the exceptional case issue and fee denial, we were "unable to review the decision of the district court on this issue." Recognizing that a remand was "unfortunate", we went on to eschew any suggestion that the case be found exceptional, noting that defendant's primary basis for requesting fees had disappeared and that, even if the case be found exceptional, a denial of fees remained discretionary with the district court.

Similarly, with regard to substantive legal issues not within our exclusive subject matter jurisdiction, our practice has been to defer to regional circuit law when reviewing cases arising under the patent laws.See Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1362, 13 USPQ2d 1967, 1970 (Fed. Cir.), cert. denied, ___ U.S. ___ , 111 S.Ct. 142, 112 L.Ed.2d 109 (1990) (Rule 37); Kalman v. Berlyn Corp., 914 F.2d 1473, 1480, 16 USPQ2d 1093, 1098 (Fed. Cir. 1990) (Rule 21); Katz v. Lear Siegler, Inc., 909 F.2d 1459, 1461, 15 USPQ2d 1554, 1556 (Fed. Cir. 1990) (Rule 19); Refac Int'l, Ltd. v. Hitachi, Ltd., 921 F.2d 1247, 16 USPQ2d 1347 (Fed. Cir. 1990) (Rules 11, 37); Registration Control Sys. v. Compusystems, Inc., 922 F.2d 805, 807, 17 USPQ2d 1212, 1214 (Fed. Cir. 1990) (Rule 7); Solarex Corp. v. Arco Solar, Inc., 870 F.2d 642, 643, 10 USPQ2d 1247, 1248 (Fed. Cir. 1989) (Rule 26, 37); Tennant Co. v. Hako Minuteman, Inc., 878 F.2d 1413, 1416, 11 USPQ2d 1303, 1305-06 (Fed. Cir. 1989) (Rule 37); Amstar Corp. v. Envirotech Corp., 823 F.2d 1538, 1550, 3 USPQ2d 1412, 1421 (Fed. Cir. 1987) (Rule 60); Truswal Sys. v. Hydro-Air Eng'g, Inc., 813 F.2d 1207, 1209, 2 USPQ2d 1034, 1036 (Fed. Cir. 1987) (Rule 45(b)); Ashland Oil, Inc. v. Delta Oil Prods. Co., 806 F.2d 1031, 1033, 1 USPQ 1073, 1075

The served party has the option of providing appropriate written objections and leaving it to the party seeking discovery to file a motion to compel. SeeBadalamenti v. Dunham's, Inc., 896 F.2d 1359, 1362 (Fed.Cir.1990); Continental Industries, Inc. v. Integrated Logistics Solutions, LLC, 211 F.R.D. 442, 444 (N.D.Okla.2002). See also Rules 33(b)(4) and (b)(5) and 37, Federal Rules of Civil Procedure and Advisory Committee Notes To Rules 33 and 34 (1970 Amendment).

Id. The burden is upon the party requesting the fees to prove by clear and convincing evidence that it merits the exceptional case status. Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1364 (Fed. Cir. 1990). However, one caveat exists.

See J.P. Stevens Co. v. Lex Tex Ltd., 822 F.2d 1047, 1050, 3 USPQ2d 1235, 1237 (Fed. Cir. 1987). The first step concerns a question of fact which we review for clear error, see Badalamenti v. Dunham's Inc., 896 F.2d 1359, 1364, 13 USPQ2d 1967, 1972 (Fed. Cir.), cert. denied, 498 U.S. 851, 111 S.Ct. 142, 112 L.Ed.2d 109 (1990), and the second lies within the discretion of the trial judge, which we review for abuse, see Mathis v. Spears, 857 F.2d 749, 754, 8 USPQ2d 1029, 1033 (Fed. Cir. 1988).

The imposition of sanctions for misconduct during discovery is not unique to this court's jurisdiction. See, e.g., Wexell v. Komar Indus., Inc., 18 F.3d 916, 919, 29 USPQ2d 2017, 2020 (Fed. Cir. 1994) (reviewing discovery sanctions under Sixth Circuit standards); Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1362, 13 USPQ2d 1967, 1970 (Fed. Cir. 1990) (same). Accordingly, this court applies the law of the pertinent regional circuit, in this case the United States Court of Appeals for the Sixth Circuit. See Pro-Mold Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1574, 37 USPQ2d 1626, 1631 (Fed. Cir. 1996).

That sanction hasn't yet been approved by the district court and isn't before us. Relying on Badalamenti v. Dunham's, Inc., 896 F.2d 1359 (Fed. Cir. 1990), defendants contend that the court abused its discretion because they had objected to the discovery requests as ambiguous, and plaintiffs never "tested" those objections. But plaintiffs' motion to compel discovery is the only testing that Rule 37(a)(4) requires.