The “majority view” is that “sanctions may be imposed where evasive or incomplete responses impede discovery.” Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1363 (Fed. Cir. 1990) (citations omitted). The Badalamenti court summarizes the split as follows:

Buergofol is correct that it was not permitted under the Federal Rules of Civil Procedure to “simply fail to produce responsive documents that [it] considers to be trade secrets[,]” but the Rules do permit a party to serve objections to a request for production without ever filing for a protective order. Docket 75 at 10; see Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1362 (Fed. Cir. 1990) (explaining that “[t]he plain terms of the rules of civil procedure” give parties responding to document requests four options: (1) agree to produce the documents, (2) object to the request, (3) move for a protective order, or (4) ignore the request).

The courts of appeals disagree about whether an incomplete or evasive response to written discovery-as distinguished from a total failure to respond-may provide a basis for sanctions under Fed.R.Civ.P. 37(d) or, instead, must first be addressed by a motion to compel under Fed.R.Civ.P. 37(a)(3)(B). See Badalementi v. Dunham's Inc., 896 F.2d 1359, 1363 (Fed. Cir. 1990) (collecting cases). For example, in Fox v. Studebaker-Worthington, Inc., 516 F.2d 989 (8th Cir. 1975), the Eighth Circuit concluded that “[t]he provisions of Rule 37(d) with regard to interrogatories do not apply when the failure to comply is anything less than a total failure to respond.”

The courts of appeals disagree about whether an incomplete or evasive response to written discovery-as distinguished from a total failure to respond-may provide a basis for sanctions under Fed.R.Civ.P. 37(d) or, instead, must first be addressed by a motion to compel under Fed.R.Civ.P. 37(a)(3)(B). See Badalementi v. Dunham's Inc., 896 F.2d 1359, 1363 (Fed. Cir. 1990) (collecting cases). For example, in Fox v. Studebaker-Worthington, Inc., 516 F.2d 989 (8th Cir. 1975), the Eighth Circuit concluded that “[t]he provisions of Rule 37(d) with regard to interrogatories do not apply when the failure to comply is anything less than a total failure to respond.”

Buergofol is correct that it was not permitted under the Federal Rules of Civil Procedure to “simply fail to produce responsive documents that [it] considers to be trade secrets[,]” but the Rules do permit a party to serve objections to a request for production without ever filing for a protective order. Docket 75 at 10; see Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1362 (Fed. Cir. 1990) (explaining that “[t]he plain terms of the rules of civil procedure” give parties responding to document requests four options: (1) agree to produce the documents, (2) object to the request, (3) move for a protective order, or (4) ignore the request). Rule 37(d) allows a requesting party to move for sanctions when a party both does not respond and has not filed a motion for protective order, but that provision only applies when the resisting party serves no response at all,not when it responds with objections.

Or, an abuse of discretion occurs when (1) the district court's decision is clearly unreasonable, arbitrary, or fanciful; (2) "the decision is based on an erroneous conclusion of law; (3) the district court's findings are clearly erroneous[.]" Badalementi v. Dunham's, Inc., 896 F.2d 1359, 1362 (Fed. Cir. 1990) (applying Sixth Circuit law); accord Beil v. Lakewood Eng'g, 15 F.3d 546, 551-52 (6th Cir. 1994); Southward v. S. Cent. Ready Mix Supply Corp., 7 F.3d 487, 492 (6th Cir. 1993). A district court abuses its discretion "when it relies on erroneous findings of fact, applies the wrong legal standard, misapplies the correct legal standard when reaching a conclusion, or makes a clear error of judgment."

The Court has considered the parties' arguments regarding the imposition of sanctions under Fed. R. Civ. P. 37. There is no evidence indicating that Calvert's responses to discovery have so impeded Madden's discovery efforts as to constitute a failure to comply with discovery within the meaning of Rule 37(d). SeeJackson by Jackson v. Nissan Motor Corp. in USA, No. 88-6132, 1989 WL 128639, at *5 (6th Cir. Oct. 30, 1989); Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1363 (Fed. Cir. 1990) (document requests); Laukus v. Rio Brands, Inc., 292 F.R.D. 485, 502 (N.D. Ohio 2013); Bell v. Auto. Club of Mich., 80 F.R.D. 228, 232 (1978) appeal dismissed, 601 F.2d 587 (6th Cir.), cert. denied, 442 U.S. 918, 99 S.Ct. 2839, 61 L.Ed.2d 285 (1979). For this reason, the undersigned concludes that Madden is not entitled to sanctions under Rule 37(d).

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.

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. Badalementi v. Dunham's, Inc., 896 F.2d 1359, 1362 (Fed. Cir. 1990)(applying Sixth Circuit law); Beil v. Lakewood Engineering, 15 F.3d 546 (6th Cir. 1994); Southward v. South Central Ready Mix Supply Corp., 7 F.3d 487, 492 (6th Cir. 1993). An appellate court will reverse for abuse of discretion only if it is left with a definite and firm conviction that the trial court committed a clear error of judgment.

Gilead contends that there were better and more efficacious alternatives such as Viread® and another generic product that were on the doorstep of entering the market. As previously discussed, it is within the court's discretion whether or not to award attorney's fees. Machinery Corp. of Am., 774 F.2d at 471; Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1364 (Fed. Cir. 1990). It is equally clear that the defendant bears the burden of proving, by clear and convincing evidence, that this case is exceptional.