In LadaTech, LLC v. Illumina, Inc., C.A. No. 09-627-SLR (Jan. 3, 2011), a recent Special Master decision, Plaintiff wanted its General Counsel, who was also one of three directors of the company, to have access to all confidential information produced in the case. Plaintiff argued that its General Counsel was not a competitive decisionmaker, or in the alternative, the threat of inadvertent disclosure “should not deprive [Plaintiff] of its choice of counsel.” Id. at 2. The Special Master quoted the “competitive decisionmaker” standard from In re Deutsche Bank Trust Co., 605 F.3d 1373, 1378 (Fed. Cir. 2010), i.e. “counsel’s activities, association, and relationship with a client that are such as to involve counsel’s advice and participation in any or all of the client’s decisions (pricing, product design, etc.) made in light of similar or corresponding information about a competitor.” Id. at 4. The Special Master also noted that due to the General Counsel’s “unique role” in the organization, there was a legitimate concern regarding inadvertent disclosure. Id. at 6.
Despite acknowledging that Plaintiff’s outside counsel were fully capable of advising their client, and that Plaintiff didn’t indicate how General Counsel’s access to confidential information was vital to the suit, the Special Master decided that “the court should not deny [Plaintiff] the opportunity to meaningfully participate in the prosecution of its case. Id. at 7. However, the Special Master conditioned General Counsel’s access to all confidential information on his agreement to a prosecution bar and to forgo engaging in competitive decisionmaking. Id.