By Eric Schweibenz
On April 20, 2010, ALJ E. James Gildea issued Order No. 4, denying a joint motion for addendum to the Ground Rules, and granting a joint motion for an addendum to the Protective Order in Certain Wireless Communication System Server Software, Wireless Handheld Devices And Battery Packs (Inv. No. 337-TA-706).

According to the Order, the parties jointly moved for an addendum to the Ground Rules to permit a “clawback” provision regarding inadvertently disclosed privileged documents or materials.  In the Order, ALJ Gildea determined that he “does not incorporate ‘claw back’ procedures into the ground rules or protective order of an investigation” because the “Federal Circuit has held en banc that ‘[t]he attorney-client privilege evaporates upon any voluntary disclosure of confidential information to a third party’ and that it ‘is irrelevant whether the [disclosure] was inadvertent.’”

ALJ Gildea further stated that he “has taken no position as to the freedom of the parties to enter into a private stipulation” as to claw-back provisions, however, “they are responsible for resolving disputes relating to inadvertent production on their own.”   The Order denied the joint motion on the grounds that “a claw-back agreement may not shield the inadvertent production of an attorney-client privileged document to an adversary absent some showing that a party used a reasonable effort to protect the confidences it contains.”

The same order also granted a separate joint motion seeking entry of an addendum to the Protective Order in order to address the production of highly confidential source code.

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