TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC.

Authored by: Jeremy J. Gustrowsky

In a case involving Columbia University’s patent dispute with Gen Digital (formerly Symantec/NortonLifeLock), the Federal Circuit reversed a civil contempt finding against the law firm Quinn Emanuel Urquhart & Sullivan, LLP. The case centered on whether a conflict of interest in a lawyer’s representation of a witness automatically destroys the attorney-client privilege over their communications. The Federal Circuit said no.

The underlying dispute involved Columbia’s claims that its professors were the true inventors of U.S. Patent No. 8,549,643, which listed a Norton employee as the sole inventor. During discovery, Quinn Emanuel agreed to represent a former Norton employee, Dr. Marc Dacier, as a witness in the case. Dr. Dacier later had conversations with Columbia’s professors suggesting he believed Norton had acted improperly in patenting technology developed by the Columbia researchers. Despite reportedly wanting to testify on Columbia’s behalf, Dr. Dacier ultimately did not appear at trial. Columbia argued that Quinn Emanuel had a conflict of interest in representing both Norton and Dr. Dacier, and that the firm had effectively prevented Dr. Dacier from testifying against its primary client.

The district court agreed with Columbia that a conflict of interest existed and took the significant step of ruling that the conflict automatically voided the attorney-client relationship between Quinn Emanuel and Dr. Dacier. Based on that reasoning, the court ordered the firm to publicly disclose all communications it had with Dr. Dacier during the period of the alleged conflict (roughly 2017 through 2020). When Quinn Emanuel refused, citing attorney-client privilege, the court held the firm in civil contempt. As a sanction, the court imposed a negative inference that Quinn Emanuel’s litigation conduct was “egregious,” which factored into the district court’s award of enhanced damages and attorneys’ fees against Norton.

The Federal Circuit reversed. The court found that even if Quinn Emanuel had a genuine conflict of interest warranting disqualification, that conflict did not automatically terminate the attorney-client privilege. Citing decisions from multiple circuit courts, the panel explained that a client’s privilege “should not be defeated solely because the attorney’s conduct was ethically questionable.” The court noted that a contrary rule would unfairly punish the client for the lawyer’s mistakes. An attorney who has a conflict may face disciplinary sanctions or malpractice liability, but the privilege over communications with the client remains intact unless the client waives it. Columbia itself conceded this point at oral argument.

The court also rejected several procedural arguments raised by Columbia, including that Quinn Emanuel should have sought in camera review instead of outright refusing to comply, that the firm needed to contact Dr. Dacier before asserting the privilege on his behalf, and that Dr. Dacier had waived the privilege through an email. The Federal Circuit found none of these arguments persuasive and denied Columbia’s motion to supplement the record with a new declaration from Dr. Dacier. Because the underlying disclosure order was invalid, the contempt finding based on it could not stand.