Before Dyk, Prost, and Reyna. Appeal from the United States District Court for the Eastern District of Virginia.
Summary: Even if an attorney would be disqualified from representing a client due to a conflict of interest, a court may not compel the disclosure of privileged communications because the conflict of interest does not automatically eliminate the attorney‑client privilege.
Columbia University sued Gen Digital (Norton) seeking, among other claims, correction of inventorship of Norton’s U.S. Patent No. 8,549,643 to identify two Columbia professors as the true inventors or at least joint inventors. After jury trial, the district court entered judgment correcting inventorship to add the Columbia professors as joint inventors. The district court also awarded Columbia enhanced damages for infringement and attorneys’ fees.
In connection with the inventorship issue, Columbia argued that Norton’s counsel, Quinn Emanuel, improperly represented both Norton and a former Norton employee, Dr. Dacier, and improperly prevented Dacier from testifying at trial in support of Columbia’s inventorship claims. Norton originally identified Dacier as a fact witness regarding the inventorship issue. But during a years-long stay in the litigation, Dacier met with one of the Columbia professors at a professional event and expressed regret for Norton’s conduct regarding the inventorship issue. Columbia then contacted Dacier, who said he was unrepresented, to have him testify in support of Columbia’s inventorship claims. Norton then reconfirmed that Quinn still represented Dacier. Before trial, Quinn represented that Dacier had moved to Saudi Arabia and would not attend the trial.
During motions in limine, the district court sua sponte ruled that Quinn had a conflict of interest in representing Dacier based on his expressed regret over Norton’s conduct. The district court ruled the conflict “voided” the retainer agreement and ordered Quinn to disclose information obtained from Dacier during the conflict period. Quinn refused and asserted attorney-client privilege. After trial, Columbia continued seeking Quinn’s compliance with the disclosure order to support an award for enhanced damages or attorneys’ fees. The district court held Quinn in civil contempt and imposed a negative‑inference sanction for purposes of enhanced damages and attorneys’ fees in the related infringement dispute.
The Federal Circuit reversed the disclosure order and the order holding Quinn in contempt. The court held that a conflict does not automatically terminate the attorney‑client relationship or vitiate attorney-client privilege, making the disclosure order invalid. Because civil contempt requires violation of a valid decree, the invalid disclosure order could not support contempt sanctions. As a result, the court also set aside the district court’s award of enhanced damages and attorneys’ fees, which were based in part on the contempt sanctions.
Co-Author: Colin Cormier (NY State Bar Pending)
Editor: Sean Murray
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