Quinn Emanuel convinced the Federal Circuit to undo a contempt order and related $296 million damages enhancement based on a firm partner’s representation of a witness in a high-stakes patent suit.
The US Court of Appeals for the Federal Circuit reversed a contempt order stemming from Quinn’s refusal to disclose its communications with Marc Dacier, a former employee of NortonLifeLock, which had been accused of infringing patents owned by Columbia University. A subsequent district court ruling enhancing the damages Norton owed in the case from $185 million to $481 million relied heavily on the contempt finding.
The appeals court’s Wednesday precedential opinion said Quinn was justified in refusing to divulge what it said were privileged communications in response to a request by the US District Court for the Eastern District of Virginia that led to the sanctions. The district court erred by finding a “conflict of interest automatically terminated the attorney-client relationship between Dr. Dacier and Quinn,” wrote Judge Timothy B. Dyk.
In the underlying patent dispute, Columbia claimed that a Norton employee who had once worked for Dacier took an invention conceived by two Columbia professors and filed a patent on it. The ethics dilemma emerged after Dacier ran into one of the professors at a conference during a long lull in the patent case. Dacier reportedly told the professor, “he was sorry about what Norton had done.”
A Columbia lawyer then reached out to Dacier and the university eventually tried to get him to testify in the case as their witness.
Trial lawyers for the two sides sparred over whether Quinn could still represent Dacier, given his expression of contrition. They also disputed whether one of Columbia’s lawyers committed their own ethical lapse by reaching out to Dacier in the first place, since he’d been represented by Quinn early in the case and during a seven-hour deposition.
Dyk, for the appeals court, wrote that even if there was a conflict of interest warranting Quinn’s disqualification, as the district judge found, she was wrong to conclude that this destroyed the privileged status of the firm’s prior communications with Dacier.
“Because we find that the Disclosure Order was invalid, it follows that it cannot be the basis for a finding of civil contempt,” Dyk wrote. He added that the ruling didn’t foreclose “alternative sanctions for Quinn’s conduct” unrelated to the disclosure issue.
In a separate opinion—also marked as precedential and authored by Dyk—the court vacated the damages award and remanded the case, ruling the district court erred in not finding the asserted patents directed toward an abstract concept and thus potentially invalid.
The court remanded the case back to the Virginia court to determine if the patents, though abstract, contain inventive feature that might save them from being deemed ineligible under Section 101 of the Patent Act.
Judges Sharon Prost and Jimmie V. Reyna joined both opinions.
Columbia and Quinn declined requests for comment on the rulings. A lawyer for Norton didn’t immediately respond to a request.
Columbia is represented by Sullivan & Cromwell. Quinn Emanuel is represented by Clement & Murphy. Weil, Gotshal & Manges and Latham & Watkins represent Gen Digital, Norton’s parent company.
The cases are:
- Trs. of Columbia Univ. v. Gen Digital Inc., Fed. Cir., 24-1243, vac’d and rem’d 3/11/26;
- Trs. of Columbia Univ. v. Gen Digital Inc., Fed. Cir., 24-1244, rev’d 3/11/26.
To contact the reporter on this story:
To contact the editors responsible for this story: