On Appeal from the United States District Court for the Eastern District of Pennsylvania.
BEFORE: GIBBONS and GARTH, Circuit Judges and ROSENN, Senior Circuit Judge
This appeal presents the question whether 28 U.S.C. § 1782(a),*fn1 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. § 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 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, 46 L. Ed. 2d 142, 96 S. Ct. 218, 191 U.S.P.Q. (BNA) 240 (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. § 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*fn2 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. § 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 ...