Caterpillar Inc v John Deere Ltd

FEDERAL COURT OF AUSTRALIA
Caterpillar Inc v John Deere Ltd [1999] FCA 723
CATERPILLAR INC V JOHN DEERE LTD
VG 739 OF 1997
HEEREY J
20 MAY 1999
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VG 739 OF 1997

BETWEEN:

CATERPILLAR INC
Applicant

AND:

JOHN DEERE LTD (ACN 008 671 725) AND OTHERS
Respondent

JUDGE:

HEEREY J

DATE:

20 MAY 1999

PLACE:

MELBOURNE

REASONS FOR JUDGMENT

Some issues have arisen as to discovery sought from the applicant Caterpillar Inc. Six categories have been the subject of discussion between the parties. The only remaining categories in dispute are:
“3.All documents relating to the state of common general knowledge in Australia as at 20 December 1983 in relation to the invention described and claimed in the patent.
4.All documents relating to the state of the prior art in Australia as at 20 December 1983 in relation to the invention described and claimed in the patent.”
Before dealing with these categories I would make the general observation that an order for discovery is a discretionary one. As Practice Note 14 indicates, courts now - and in particular this court - are giving much closer scrutiny to discovery, having regard to the potential that discovery has for complicating the orderly progress of cases and creating unnecessary expense.
As to category 3, I accept what was put by Mr Shavin QC on behalf of the applicant that there is an established line of authority to the effect that particulars or discovery will not be ordered of common general knowledge. I refer to Holliday v Heppenstall (1889) 6 RPC 320 at 326, British Thomson-Houston Co Ltd v Stonebridge Electrical Co Ltd (1916) 33 RPC 166 at 171, and Aluma Systems Inc v Hunnebeck Gmbh [1982] FSR 239.
The reason for this policy is particularly apparent in the present case. The discovery sought would require the applicant to examine a vast number of documents - these documents being largely if not wholly in the United States, where the alleged invention was produced - and to speculate as to whether back in 1983 the hypothetical non-inventive skilled person in Australia would or would not have known of the matters disclosed in those documents. I think the discovery sought would be quite an onerous and unreasonable burden.
As to category 4, the particulars required by O 58 r 15(2) have been given of the publications and machines alleged to constitute prior use. The respondent is confined to those matters and should not be permitted, in my opinion, to fish around seeing if there are any other matters that might constitute prior use. It was said that documents might "explain or elucidate" the matters relied on to constitute prior use but that does not seem to me to be a sufficient basis. I expect that there will be no lack of explanation and elucidation of these matters by expert witnesses called at the trial.
The respondent has to establish whether the publications relied on were in fact published in Australia prior to the priority date and whether the various machines referred to were available or in existence in Australia at the priority date. Then the respondent has to show that those matters did involve an anticipation. Discovery is not likely to be of assistance on those issues.

I certify that the preceding six (6) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey.
Associate:
Dated: 20 May 1999

Counsel for the Applicant: Mr D Shavin QC with Mr G Clarke

Solicitor for the Applicant: Freehill Hollingdale and Page

Counsel for the Respondent: Mr G Fitzgerald

Solicitor for the Respondent: Davies Collison Cave

Date of Hearing: 20 May 1999

Date of Judgment: 20 May 1999

CaseChat Overview and Summary

In the case of Caterpillar Inc v John Deere Ltd, the Federal Court of Australia was called upon to resolve a dispute concerning the discovery of documents. The applicant, Caterpillar Inc, sought specific documents from the respondent, John Deere Ltd, in relation to a patent infringement case. The primary focus of the case was on two categories of documents: those concerning the state of common general knowledge in Australia as of a particular date, and those concerning the state of prior art in Australia as of the same date. The respondent contested the discovery request, arguing that it was overly broad and burdensome.

The legal issues before the court were whether the discovery sought by Caterpillar Inc was justified and whether it was reasonable to expect John Deere Ltd to provide such extensive documentation. The court had to consider whether the discovery process would unduly complicate the case and create unnecessary expense, as well as whether the documents sought were relevant and necessary to the issues at hand. The court also needed to determine whether the discovery request was overly broad and whether it went beyond what was necessary for the resolution of the case.

The court ruled that the discovery request was overly broad and unreasonable. Justice Heerey noted that discovery orders are discretionary and that courts are increasingly scrutinising such requests to avoid unnecessary complications and expense. Regarding the first category, the court found that it was not appropriate to order particulars or discovery of common general knowledge. The court referenced several precedents supporting this position, stating that such an order would require the examination of numerous documents, largely located overseas, and would involve speculation about the knowledge of a hypothetical person in Australia. The court deemed this to be an onerous and unreasonable burden. For the second category, the court held that the respondent was limited to the matters already specified in the discovery request and should not be allowed to conduct a broad search for additional documents that might constitute prior use. The court concluded that discovery was unlikely to be helpful in resolving the specific issues of whether the publications and machines relied upon constituted prior use.

In summary, the court denied the discovery request, finding it to be excessive and not conducive to the efficient and fair resolution of the case. The court emphasised the need to balance the interests of the parties and the importance of not unnecessarily complicating the case. The court's decision underscored the importance of carefully considering the scope and necessity of discovery requests in patent litigation.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VG 739 OF 1997

BETWEEN:	CATERPILLAR INC Applicant
AND:	JOHN DEERE LTD (ACN 008 671 725) AND OTHERS Respondent

JUDGE:	HEEREY J
DATE:	20 MAY 1999
PLACE:	MELBOURNE

Counsel for the Applicant:	Mr D Shavin QC with Mr G Clarke
Solicitor for the Applicant:	Freehill Hollingdale and Page
Counsel for the Respondent:	Mr G Fitzgerald
Solicitor for the Respondent:	Davies Collison Cave
Date of Hearing:	20 May 1999
Date of Judgment:	20 May 1999