Caterpillar Inc v John Deere Limited

Section 63(2) - Is the person "not available"? 14 In the course of argument Deere tendered an affidavit sworn by Keith Von Rockey, a Chicago lawyer who appeared as leading counsel for Deere in the US proceedings. Mr Von Rockey deposes that he took the depositions of Mr Grawey, that he has read the transcript and believes it is a true and accurate record of Mr Grawey's depositions. Mr Grawey has not signed the transcript, but Mr Von Rockey says that under r 32(d)(4) of the US Federal Rules of Civil Procedure a deponent is taken to waive any right to complain of errors in transcripts unless a motion is issued promptly after a defect is detected. No such motion has been issued by Mr Grawey. 15 However it is clear that the "person" for the purposes of ss 63 and 64 is Mr Grawey and not Mr Von Rockey. So much is clear from the terms of the Notice itself. In any case, the subject matter of the representations is the work Mr Grawey and other Caterpillar employees did in the course of discovering the alleged invention. These are matters within the personal knowledge of Mr Grawey, he being a claimed inventor. But Mr Von Rockey's knowledge of these matters is not based on something he "saw, heard or otherwise perceived, other than a previous representation made by another person about the fact" (s 62(2)). Thus, if the relevant representation was Mr Von Rockey's evidence as to what Mr Grawey said in the US proceedings such a representation would not be within Div 2 of Pt 3.1 at all. It would not be "first-hand" hearsay. 16 Another preliminary matter to be noted is that the applicable paragraph of s 63(2) is (b), not (a). It is clear that the Notice refers to representations in a document namely "the transcripts of the depositions taken to Mr Grawey in the US proceedings". The written outline of argument of counsel for Deere on the present hearing sought "a ruling admitting into evidence certain statements previously made by Charles E Grawey ... These statements are contained in transcripts of depositions taken on oath by Mr Grawey in the United States of America in 1997". 17 It was common ground that the only potentially applicable parts of cl 4(1) of the Dictionary were (e) and (f). Assuming for the purposes of argument that Deere's solicitors have "found" Mr Grawey in the sense that he is still living or working at the address mentioned, they have not in my opinion taken all reasonable steps to secure his attendance at the trial. It appears from the evidence that Mr Grawey worked for forty years for Caterpillar, reaching a senior position in the company, and then retired to carry on a consultancy practice for which a very substantial part of his custom comes from Caterpillar. He is being asked in the letter of 26 July 2000 to come to Australia, presumably at his own expense, for the purpose of being cross-examined by a company hostile to Caterpillar in a case in which that company is attacking the validity of a patent for an invention of which Mr Grawey is an inventor. It is hardly surprising that Mr Grawey did not respond to this unappealing invitation. (Also, were he to take legal advice it would be pointed out to him that Australian law does not permit a party to insert a witness into the opposing party's case and then cross-examine the witness.) 18 It is not to the point, as senior counsel for Deere argued, that Mr Grawey could have raised with Deere the question of his expenses. It was not for Mr Grawey to enter into negotiations. The onus was on Deere to show they have taken all reasonable steps to secure his attendance. At the very least one would expect Deere (one of the respondents is the US company itself) to establish personal contact with Mr Grawey. 19 The reasonableness of the steps taken by Deere in the present case can be assessed by comparison with a hypothetical example. Let it be assumed that Deere wished to secure the attendance of some other important American witness, but without any pre-conceptions as to whether or not the witness might be co-operative. It could be expected that Deere would write to the witness asking if he or she would be prepared to come to Australia to give evidence and offering to meet all expenses and compensate for the interruption of his or her business, including payment of professional fees if appropriate. If no response were received, especially where the address was three years old, it might also be expected that Deere US would try to make personal contact with the witness, ascertain whether the witness had changed address or whether there were any impediments such as health or previous commitments, and, if so, try to work out mutually satisfactory arrangements. None of this was done in the present case. 20 Nor has Deere taken all reasonable steps to compel Mr Grawey's attendance within the meaning of cl 4(1)(f). No attempt has been made to take advantage of s 7 of the Foreign Evidence Act 1974 (Cth). Deere's argument on the cl 4(1)(f) issue merely asserted that because Mr Grawey was a US resident he was beyond the process of the Federal Court and could not be compelled to give evidence in the present proceeding: Re Sherlock (1991) 102 ALR 156 at 158-9. However cl 4(1)(f) necessarily assumes that steps can be taken to compel the person's attendance; if such steps have been taken but without success then unavailability within the meaning of cl 4(1) is made out. If the person in question is in a country in respect of which Foreign Evidence Act procedures cannot be used, it would be a strange application of cl 4(1) if a party who had not taken all reasonable steps for the purposes of cl 4(1)(e) could then argue that (f) applied because no compulsive procedures were available at all. 21 Moreover, and as a separate ground for holding s 63 inapplicable, the relevant representations were not, for the purposes of s 63(2)(b), contained in a document within the meaning of cl 6 of Pt 2 of the Dictionary. The depositions were not written, made or otherwise produced by Mr Grawey. They were made by the court reporter: R v Walker (1993) 61 SASR 260 at 263 per Cox J and 266 per Duggan J; Australian Competition and Consumer Commission v Rural Press Ltd (1999) 169 ALR 201 at pars 15-16. The depositions were not signed, initialled or otherwise marked by Mr Grawey. 22 Compliance with cl 6 is mandatory, notwithstanding that cl 6, in contrast to cl 5, says "if" and not "if, and only if". Clause 6 is concerned with the connection between a person, the maker of a representation, and a document. If it were not necessary for the person to have written or made or signed or initialled the document, cl 6 would seem to be pointless. 23 The US rules referred to by Mr Von Rockey cannot remedy the failure to comply with the requirements of the Act. In any case, the natural reading of the rules is that they are directed to proceedings in the US federal courts and only operate to deem a waiver by the witness of any right to complain of errors in the transcript in proceedings in those courts.

Section 64(2) - Expense, delay or practicability 24 Deere having failed to show Mr Grawey is not available, he is taken to be available: Dictionary Pt 2, cl 4(2). To bring itself within s 64(2) Deere has to show that calling Mr Grawey would cause undue expense (undue delay was not relied on) or that it would not be reasonably practicable to call him. 25 In assessing whether expense is "undue", relevant matters would include (i) the actual cost of securing the attendance of the witness; (ii) a comparison of that cost with the value of what is at stake in the litigation; and (iii) an assessment of the importance of the evidence the witness might give. 26 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 27 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 28 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. I certify that the preceding twenty-eight (28) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey.

Counsel for the Applicant: D Shavin QC and G S Clarke

Solicitor for the Applicant: Corrs Chambers Westgarth

Counsel for the Respondent: J McL Emmerson QC and G J Fitzgerald

Solicitor for the Respondents: Davies Collison Cave