Caterpillar Inc v John Deere Limited

REASONS FOR JUDGMENT 1 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. 2 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). 3 The parties agree that this issue should be ruled on now. Strictly speaking the notice of objection under s 68(1) only applies to a proposed reliance on s 64(2) (where the person is available) as distinct from s 63(2) (where the person is not available). However, no point was taken as to this and argument proceeded on the basis that I should determine whether either s 63(2) or s 64(2) applied. These provisions fit into the scheme of the Act as follows. 4 Evidence that is relevant (as that concept is defined in s 55) is admissible unless otherwise provided by the Act: s 56(1). One of those exceptions is hearsay: Pt 3.2. Evidence of a previous representation made by a person is not admissible to prove the existence of a fact that the person intended to assert by the representation: s 59(1). Division 2 of Pt 3.2 provides certain exceptions to the hearsay rule in the case of what is called "first-hand" hearsay, that is to say a previous representation made by a person who had personal knowledge of an asserted fact: s 62(1). "Previous representation" is defined in Pt 1 of the Dictionary at the end of the Act (made applicable by s 3) to mean a representation made otherwise than in the course of giving evidence in the proceeding in which evidence of the representation is sought to be adduced. A representation includes an express or implied representation (whether oral or in writing): Dictionary, Pt 1. 5 Sections 63 and 64 relevantly provide as follows: "63.(1) This section applies in a civil proceeding if a person who made a previous representation is not available to give evidence about an asserted fact. (2) The hearsay rule does not apply to: (a) evidence of the representation that is given by a person who saw, heard or otherwise perceived the representation being made; or (b) a document so far as it contains the representation, or another representation to which it is reasonably necessary to refer in order to understand the representation. 64. (1) This section applies in a civil proceeding if a person who made a previous representation is available to give evidence about an asserted fact. (2) The hearsay rule does not apply to: (a) evidence of the representation that is given by a person who saw, heard or otherwise perceived the representation being made; or (b) a document so far as it contains the representation, or another representation to which it is reasonably necessary to refer in order to understand the representation; if it would cause undue expense or undue delay, or would not be reasonably practicable, to call the person who made the representation to give evidence." 6 Also some provisions of Pt 2 of the Dictionary are relevant. Clause 4 deals with unavailability of persons as follows: "4. (1) For the purposes of this Act, a person is taken not to be available to give evidence about a fact if: (a) the person is dead; or (b) the person is, for any reason other than the application of section 16 (Competence and compellability: judges and jurors), not competent to give the evidence about the fact; or (c) it would be unlawful for the person to give evidence about the fact; or (d) a provision of this Act prohibits the evidence being given; or (e) all reasonable steps have been taken, by the party seeking to prove the person is not available, to find the person or to secure his or her attendance, but without success; or (f) all reasonable steps have been taken, by the party seeking to prove the person is not available, to compel the person to give the evidence, but without success. (2) In all other cases the person is taken to be available to give evidence about the fact." 7 Clause 6 of Pt 2 of the Dictionary deals with representations contained in a document: "6. For the purposes of this Act, a representation contained in a document is taken to have been made by a person if: (a) the document was written, made or otherwise produced by the person; or (b) the representation was recognised by the person as his or her representation by signing, initialling or otherwise marking the document." 8 The Notice states that the respondents give notice under s 67 that they intend to adduce evidence of a previous representation and to argue that the hearsay rule does not apply to the evidence in reliance on s 63(2) or alternatively s 64(2). Paragraph 2(a) of the Notice states: "2. (a) The substance of evidence of each of the previous representations that is intended to be adduced is as follows: (i) The representations by Charles E Grawey ('Mr Grawey') set out in Confidential Annexure 'A' hereto and in the transcripts of the depositions taken of Mr Grawey in the US proceedings referred to below, which are exhibited as part of the exhibit marked 'CFJ-1-Confidential to the affidavit of Christopher Francis Jordan sworn 28 September 2000, a copy of which affidavit (together with its exhibits) is attached to this Notice." 9 Paragraph 2(b) of the Notice gives the date, time, place and circumstances at or in which the representations mentioned in par 2(a) were made, namely on six dates in May and June 1997 in either Chicago or Peoria, Illinois in the course of the deposition of Mr Grawey in the US District Court for the Northern District of Illinois, Eastern Division in proceeding No. 96C5355 ("the US proceedings"). The Confidential Annexure "A" is headed "Substance of previous representations or summary of evidence taken from depositions of Charles E Grawey in US proceedings". There then follow 36 paragraphs each of which contains an asserted fact with a transcript reference, for example: "2 Mr Grawey worked for Caterpillar from 1951 to 1991 (T4,T7). 4. The US patent corresponding to the patent in suit ("the corresponding US patent") is addressed to persons skilled in the art of agricultural engineering tractor design and persons skilled in the arts of rubber compounding and rubber products (T106-7)." 10 In the affidavit referred to in the Notice Mr Jordan deposes, inter alia, that on 17 July 2000 Deere's solicitors wrote to Caterpillar's solicitors asking whether Mr Grawey would be giving evidence at the trial. Having received no reply to that letter the solicitors on 26 July wrote a letter to Mr Grawey addressed to him at 210 East Orchard Place, Peoria Illinois, being the address mentioned in his deposition transcripts. The letter advised that the solicitors acted on behalf of Deere in relation to Australian patent infringement proceedings brought by Caterpillar, that Mr Grawey was named as one of the inventors of the patent and that the Australian proceedings, broadly speaking, corresponded to the US proceedings in which he was deposed. The letter continued: "The contents of your deposition in the US proceedings are relevant to the issues raised in the Australian proceedings. Our clients wish to rely on parts of your US depositions in the Australian proceedings, as part of their case against Caterpillar. The purpose of this letter is to ask you whether you would be prepared to come to Australia to give evidence in the trial. It is likely the trial will commence in February or March 2001. If you were willing to come to Australia to give evidence, it would be our submission that you be treated as a witness of Caterpillar and could therefore be cross-examined by our clients. We would appreciate your response to our letter as soon as possible. You should note that we have previously enquired about your attendance to give evidence by writing to Caterpillar's Australian solicitors; however, we have had no response from them. We look forward to hearing from you." 11 The letter was delivered to the Peoria address by courier. There is no direct evidence that Mr Grawey in fact received it. No response was received to the letter or to a letter of 9 August enclosing a copy of the earlier letter and requesting a reply. 12 In Deere's cross-claim reference is made to the deposition evidence of Mr Grawey in the course of particulars given in relation to the allegations of lack of fair basing (par 3.1.2, particular (c)), failure to define the invention (par 3.1.3, particular (d)), failure to describe the best method known to the patentee (par 3.1.4, particular (a)) and inutility (par 3.2.4). 13 On the present hearing Deere submitted a schedule entitled "Examples of Grawey Representations Supporting Deere's Cross Claims". This document matches particular allegations in the cross-claim (including particulars) to passages from the transcript of Mr Grawey's depositions. In those passages Mr Grawey speaks about Caterpillar's objectives, the problems it encountered and what it did to overcome those problems in the course of working on the alleged invention.