Caterpillar Inc v John Deere Ltd (No 2) - [2000] FCA 1903

FEDERAL COURT OF AUSTRALIA
Caterpillar Inc v John Deere Limited (No 2) [2000] FCA 1903
EVIDENCE – depositions taken in United States proceedings – whether admissible pursuant to s 63 or s 64 of Evidence Act 1995 (Cth) – whether person is available to give evidence – whether all reasonable steps taken to secure attendance – letter inviting person to come to be cross-examined – no tender of expenses – no response to letter – no attempt to make personal contact – no attempt to invoke Foreign Evidence Act 1974 – whether calling person would cause undue expense – relevant factors
WORDS AND PHRASES – “all reasonable steps” “undue expense”
Evidence Act 1995 (Cth) ss 63, 64, Dictionary Pt 2, cl 4, cl 6
Foreign Evidence Act 1974 (Cth) s 7
Re Sherlock (1991) 102 ALR 156 at 158-9 mentioned
R v Walker (1993) 61 SASR 260 at 263 and 266 followed
Australian Competition and Consumer Commission v Rural Press Ltd (1999) 169 ALR 201 at pars 15-16 followed
CATERPILLAR INC V JOHN DEERE LIMITED (NO 2)
NO VG 739 OF 1997
HEEREY J
21 DECEMBER 2000
MELBOURNE

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VG 739 OF 1997

BETWEEN:

CATERPILLAR INC
FIRST APPLICANT

JOHN DEERE LIMITED (ACN 008 671 725) & ORS RESPONDENTS

AND:

JOHN DEERE LIMITED (ACN 008 671 725) & ORS
CROSS-CLAIMANTS

CATERPILLAR INC
CROSS-RESPONDENT

JUDGE:

HEEREY J

DATE OF ORDER:

21 DECEMBER 2000

WHERE MADE:

MELBOURNE

THE COURT ORDERS THAT:
1.Rule that the evidence sought to be adduced pursuant to the respondents’ notice dated 29 September 2000 is not admissible under s 63 or s 64 of the Evidence Act 1995 (Cth).
2.The respondents pay the applicant’s costs in relation to the notice and the hearing on 12 December 2000.

Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VG 739 OF 1997

BETWEEN:

CATERPILLAR INC
FIRST APPLICANT

JOHN DEERE LIMITED (ACN 008 671 725) & ORS
RESPONDENT

AND:

JOHN DEERE LIMITED (ACN 008 671 725) & ORS
CROSS-CLAIMANTS

CATERPILLAR INC
CROSS-RESPONDENT

JUDGE:

HEEREY J

DATE:

21 DECEMBER 2000

PLACE:

MELBOURNE

REASONS FOR JUDGMENT

The applicant Caterpillar Inc (“Caterpillar”) has brought this proceeding against the respondents John Deere Ltd and others (collectively “Deere”) alleging infringement of an Australian patent relating to tracked or belted tractors. Deere denies infringement and has cross-claimed seeking revocation of the Caterpillar patent on various grounds of invalidity. After extensive interlocutory proceedings the trial has been fixed for 14 May 2001 with an estimate of six weeks.
On 29 September 2000 pursuant to s 67(1) of the Evidence Act 1995 (Cth) (“the Act”) Deere filed and served a notice of intention (“the Notice”) to adduce evidence of a previous representation in reliance on s 63(2) or alternatively s 64(2) of the Act. On 19 October Caterpillar gave notice of objection under s 68(1).
The parties agree that this issue should be ruled on…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2000] FCA 1903
Decision Date: 21 DECEMBER 2000

CaseChat Overview and Summary

In the case of Caterpillar Inc v John Deere Ltd (No 2), the dispute arose between the two parties over the admissibility of certain evidence under sections 63 and 64 of the Evidence Act 1995 (Cth). The case was heard in the Federal Court of Australia, where the central issue was whether John Deere Ltd could rely on the testimony of a former Caterpillar Inc employee, Mr. Grawey, in their patent litigation. The court had to determine whether the evidence from Mr. Grawey was admissible under the exceptions to the hearsay rule provided by sections 63 and 64 of the Act, or whether the cost and inconvenience of bringing him from the United States made it unreasonable to call him as a witness.

The legal issues before the court involved interpreting the exceptions to the hearsay rule provided by sections 63 and 64 of the Evidence Act 1995 (Cth). The court needed to assess whether the circumstances of the case justified the admission of Mr. Grawey's evidence despite his absence from Australia, and whether the cost and inconvenience of his attendance could be considered undue expense or unreasonable practicability. The court also needed to consider whether the testimony could be treated as an admission under the law.

In its reasoning, the court determined that the value of the intellectual property at stake in the litigation, as well as the resources devoted by both parties, suggested that the cost of bringing Mr. Grawey from the United States would not be disproportionate. The court also noted that the reliance on his evidence in the cross-claim indicated its importance. The court concluded that no other reasons were provided to deem it unreasonable to call Mr. Grawey, and thus found that John Deere Ltd had not met the criteria set by sections 63 and 64 of the Act. Consequently, the court ruled that the evidence sought to be adduced was not admissible, and ordered John Deere Ltd to pay Caterpillar Inc's costs related to the notice and the hearing.

Orders

Orders of the court

1. Rule that the evidence sought to be adduced pursuant to the respondents’ notice dated 29 September 2000 is not admissible under s 63 or s 64 of the Evidence Act 1995 (Cth).

2. The respondents pay the applicant’s costs in relation to the notice and the hearing on 12 December 2000.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

HEEREY J

In the present case, Deere did not provide any details as to (i) or (ii). However major patent litigation in Australia more often than not involves witnesses from the Northern Hemisphere, especially where, as in the present case, there has been parallel litigation in other jurisdictions. The commitment of the parties in the present case, as evidenced by the level of representation and the resources devoted to interlocutory contests, suggests that the intellectual property rights being contested in this litigation have very substantial value. I think that if either side considered an overseas witness might be helpful, cost would not stand in the way. As to Mr Grawey himself, the fact that his evidence in the US proceedings is relied on in the particulars in the cross-claim suggests that his evidence is by no means formal or peripheral. His evidence seems important. The expense of bringing him from the United States would not be disproportionate in the context of the present case. It would not be “undue expense”. No other reason was advanced why it would not be “reasonably practicable” to call him. Conclusion I am not satisfied therefore that Deere has not brought itself within either s 63 or 64. I should add that in my opinion no question of an admission arises. I agree with senior counsel for Deere that if his client had bought itself within s 63 or 64 it would not have to establish that Mr Grawey’s representations were admissible as admissions. Admissions are an independent exception to the hearsay rule, contained in Pt 3.4 of the Act. Deere (correctly in my view) did not submit that Mr Grawey’s evidence was binding on Caterpillar as an admission. He had ceased to be an employee of Caterpillar at the time his deposition was taken and in any case he seems to have given evidence as an individual because he was compelled to attend by Deere. Orders The procedural basis of the present hearing was not clearly articulated. No notice of motion was issued. I treated the hearing as an adjourned summons for directions. However it is clear enough that no discretion is involved. Either s 63 or s 64 apply or they do not. Essentially what the parties sought was an evidentiary ruling which, for understandable practical reasons, they needed prior to trial. Accordingly I think the appropriate order is a ruling that the evidence sought to be adduced pursuant to the Notice is not admissible under s 63 or s 64 of the Act. There will be an order that Deere pay Caterpillar’s costs in relation to the Notice and the hearing on 12 December 2000.

Ratio Decidendi

Legal Principle Established

Established by: HEEREY J

Full text does not contain this section.

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

BETWEEN:	CATERPILLAR INC FIRST APPLICANT JOHN DEERE LIMITED (ACN 008 671 725) & ORS RESPONDENTS
AND:	JOHN DEERE LIMITED (ACN 008 671 725) & ORS CROSS-CLAIMANTS CATERPILLAR INC CROSS-RESPONDENT
JUDGE:	HEEREY J
DATE OF ORDER:	21 DECEMBER 2000
WHERE MADE:	MELBOURNE

JUDGE:	HEEREY J
DATE:	21 DECEMBER 2000
PLACE:	MELBOURNE