754 F.2d 132 (3rd Cir. 1985), 84-1070, John Deere Ltd. v. Sperry Corp.

Docket Nº:84-1070.
Citation:754 F.2d 132
Party Name:JOHN DEERE LIMITED and Deere & Company, Appellants, v. SPERRY CORPORATION, Appellee.
Case Date:February 05, 1985
Court:United States Courts of Appeals, Court of Appeals for the Third Circuit

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754 F.2d 132 (3rd Cir. 1985)

JOHN DEERE LIMITED and Deere & Company, Appellants,



No. 84-1070.

United States Court of Appeals, Third Circuit

February 5, 1985

Argued Sept. 13, 1984.

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Anthony S. Volpe, Philadelphia, Pa., Dugald S. McDougall (Argued), Chicago, Ill., for appellants.

Michael J. Mangan (Argued), Philip G. Kircher, Schnader, Harrison, Segal & Lewis, Philadelphia, Pa., for appellee.

Before GIBBONS and GARTH, Circuit Judges and ROSENN, Senior Circuit Judge.


GARTH, Circuit Judge.

This appeal presents the question whether 28 U.S.C. Sec. 1782(a), 1 which governs judicial assistance rendered to foreign and international tribunals and to litigants before such tribunals, requires a district court to consider: (1) the availability of reciprocal foreign procedures, and (2) the ultimate admissibility of evidence in the foreign jurisdiction prior to granting a discovery order requested by a foreign litigant. We hold 28 U.S.C. Sec. 1782(a) imposes no such requirements.


This matter arises from a patent infringement action now pending in the Federal Court of Canada between Sperry Corporation, as plaintiff, and John Deere Limited and Deere & Company, as defendants. Sperry and Deere are both major farm equipment manufacturers. The Canadian action alleges that Deere has infringed a patent which Sperry holds for the manufacture of a hay-harvesting machine. Deere now seeks to depose two American employees of Sperry, Horace McCarty and Emmett Glass, who are named as co-inventors of the patented machine. Deere further requests that in connection with their depositions, McCarty and Glass be required to

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produce documents pertaining to the disputed patent.

Similar litigation was pursued and concluded against Sperry in the United States. In 1968, Deere commenced a declaratory judgment action in the Eastern District of California to contest the validity of Sperry's American patent for a comparable harvester. During the course of that litigation, Deere took depositions of each Sperry employee it now seeks to depose. Full trial on the merits was held. The district court concluded Sperry's U.S. patent was invalid because the harvester design was obvious when compared to prior state-of-the-art products. See Deere & Co. v. Sperry Rand Corp., 322 F.Supp. 397 (E.D.Cal.1970). The court's decision was affirmed on appeal, see Deere & Co. v. Sperry Rand Corp., 513 F.2d 1131 (9th Cir.), cert. denied, 423 U.S. 914, 96 S.Ct. 218, 46 L.Ed.2d 142 (1975).

While the U.S. litigation was pending, Sperry secured a Canadian patent for manufacture of the identical harvester. On December 5, 1978, after the close of the American action, Sperry surrendered its original Canadian patent, No. 924,111, and simultaneously obtained a Canadian reissue patent, No. 1,043,577. This latter patent, unlike the original Canadian patent, was based upon claims and specifications that distinguished it from the earlier machine model. The reissue was based largely upon affidavits submitted by both McCarty and Glass and contained matter not present in the earlier U.S. or Canadian patents.

On January 8, 1979, Sperry filed an infringement action against Deere in the Federal Court of Canada. Deere asserted the invalidity of the Canadian patent as a defense and challenged the accuracy of the McCarty-Glass affidavits on which the reissue patent was based.

On September 29, 1983, Deere initiated this action pursuant to 28 U.S.C. Sec. 1782 in the District Court for the Eastern District of Pennsylvania, the district wherein both McCarty and Glass reside. Deere brought an ex parte motion seeking an order directing Sperry and its employees, McCarty and Glass, to produce certain documents and to appear and testify on oral deposition. The district court entered the order and gave Sperry ten days within which to respond or otherwise plead. On October 11, 1983, Sperry moved to vacate the order.

On November 16, 1983, the district court issued a memorandum and order vacating its prior order. John Deere Limited v. Sperry Corporation, 100 F.R.D. 712 (1983). The court concluded that granting the discovery order would not further reciprocity interests, both because Canadian law apparently precluded the use of letters rogatory 2 and because the material sought was not clearly admissible at trial in Canada. Id. at 714. Thus, Deere was denied all the relief it sought in the present action. Thereafter, Deere filed a request for reconsideration which was denied. We reverse.


The issue before this court is whether discovery orders under 28 U.S.C. Sec. 1782 should be freely available to persons interested in foreign litigation. Had the Canadian tribunal directly petitioned the district court to permit testimony to be taken, there would be little question as to the propriety of honoring the request for assistance. Without the issuance of letters rogatory, the district court questioned both whether Canadian courts would honor similar requests from American litigants and whether the material sought would be admissible under Canadian rules of evidence. To the extent that the district court's decision to deny discovery was predicated upon lack of reciprocity and admissibility, we hold that the district court improperly exercised its discretion.

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28 U.S.C. Sec. 1782 reflects a determination on the part of Congress to broaden the scope of international judicial assistance afforded by the federal courts. Although the legislative history of section 1782 is brief, the general statement which accompanies the legislation notes:

Until recently, the United States has not engaged itself fully in efforts to improve practices of international cooperation in litigation. The steadily growing involvement of the United States in international intercourse and the resulting increase in litigation with international aspects have demonstrated the necessity for statutory improvements and other devices to facilitate the conduct of such litigation. Enactment of the bill into law will constitute a major step in bringing the United States to the forefront of nations adjusting their procedures to those of sister nations and thereby providing equitable and efficacious procedures for the benefit of tribunals and litigants involved in litigation with international aspects.

It is hoped that the initiative taken by the United States in improving its procedures will invite foreign countries similarly to adjust their procedures.

S.Rep. No. 1580, 88th Cong., 2d Sess., reprinted in 1964 U.S.Code & Ad.News 3782, 3783.

As a cooperative measure, section 1782 cannot be said to ignore those considerations of comity and sovereignity that pervade international law. A grant of discovery that trenched upon the clearly established procedures of a foreign tribunal would not be within section 1782. That the statute is an attempt to codify measures for international judicial assistance, however, does not imply a reciprocity requirement. Rather, the legislation is largely exemplary and aspirational, an attempt to stimulate reciprocity.

The liberal intent to provide judicial assistance whether or not reciprocity exists has been acknowledged as a primary statutory goal since section 1782's inception. Indeed, the Chairman of the Advisory Committee to the United States Commission on International Rules of Judicial Procedure has written that the sponsors of the legislation hoped that the provisions for formal judicial assistance not only would enable full assistance to be made available, but also would furnish an "... example of unilateral, nonreciprocal, internal legislation, ... which other countries may wish to follow." Amram, Public Law No. 88-619 of October 3, 1964--New Developments in International Judicial Assistance in the United States of America, 32 D.C.Bar J. 24, 33 (1965) (emphasis added).

Courts also have recognized that the unilateral character of the legislation does not require reciprocity as a predicate to the grant of a discovery order. See In re Request for Judicial Assistance from Seoul, 428 F.Supp. 109, 112 (N.D.Cal.1977), aff'd 555 F.2d 720 (9th Cir.1977); In re Letter Rogatory from the Justice Court, District of Montreal, Canada, 523 F.2d 562, 565 (6th Cir.1975). Thus, although the district court was not prohibited from giving the absence of reciprocity some consideration in the exercise of its discretionary power, its decision should not have been predicated upon a finding of reciprocity.


The district...

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