Reversing a district court order requiring the disclosure of attorney-client communications and holding a law firm in civil contempt, the US Court of Appeals for the Federal Circuit ruled that an attorney’s conflict of interest does not automatically terminate the attorney-client privilege and that an invalid order could not support civil contempt. Trs. of Columbia Univ. in City of New York v. Gen Digital Inc., Case No. 24-1243, (Fed. Cir. Mar. 11, 2026) (Dyk, Prost, Reyna, JJ.)
The Trustees of Columbia University sued Gen Digital, the Norton software brand marketer, for infringement of two patents and to correct the inventorship of one of the patents. Norton owned the patent on which inventorship correction was sought, and a Norton employee, Dr. Dacier, was listed as the sole inventor. Columbia alleged that two Columbia professors invented the subject matter.
On the inventorship issue, Norton and Dr. Dacier were both represented by Quinn Emanuel Urquhart & Sullivan. Dr. Dacier was deposed and testified about the development of the invention, including activities involving the Columbia professors. Dr. Dacier did not attribute any inventive contributions to the Columbia professors, but Columbia argued – and the district court agreed – that his testimony supported Columbia’s inventorship theory.
Before the district court, Columbia argued that this representation created an improper conflict of interest, particularly because Dr. Dacier had allegedly expressed views critical of Norton’s litigation positions. In Columbia’s view, Quinn Emanuel had improperly prevented Dr. Dacier from testifying at trial in support of Columbia’s inventorship claims. The district court agreed, finding that Quinn Emanuel’s representation of Dr. Dacier raised a conflict, and ruled that Quinn Emanuel’s current representation of Norton automatically terminated its representation of Dr. Dacier. The district court ordered Quinn Emanuel to release its communications with Dr. Dacier. Quinn Emanuel had previously asserted a claim of privilege over these communications. Quinn Emanuel refused the production order, and the district court found Quinn Emanuel in civil contempt. As a sanction, the district court imposed a negative evidentiary inference that Dr. Dacier would have testified to improper conduct by Quinn Emanuel – supporting Columbia’s motion for enhanced damages and attorneys’ fees in a companion case. Quinn Emanuel appealed.
On appeal, Quinn Emanuel argued that the district court’s order requiring the disclosure of communications with Dr. Dacier was invalid because it improperly compelled production of privileged communications and that the contempt finding should be reversed. Columbia argued that the disclosure order was proper because Norton did not raise the privilege issue response to Columbia’s motion for an order to show cause, Quinn Emanuel failed to request in camera review, Quinn Emanuel did not contact Dr. Dacier to determine if he wanted to assert privilege, and Dr. Dacier waived the privilege by emailing both Columbia’s counsel and Quinn Emanuel disclosing that he had been in contact with Columbia’s counsel.
The Federal Circuit rejected all four arguments, holding that there was “no question that Dr. Dacier retained Quinn [Emanuel] to represent him and that he did not terminate the relationship in writing as provided for by the agreement.” The Federal Circuit also disagreed with the district court’s conclusion that the attorney-client privilege was “automatically terminated” because of Quinn Emanuel’s conflict of interest. Instead, the Court explained that even ethically questionable conduct by an attorney does not defeat the client’s privilege and emphasized that a contrary rule would be “unfairly damaging” to a good-faith client.
Having found the disclosure order to be invalid, the Federal Circuit necessarily reversed the contempt order.
