Trustees of Columbia University v. Gen Digital Inc.

Case: 24-1244    Document: 22     Page: 1   Filed: 03/11/2026




   United States Court of Appeals
       for the Federal Circuit
                  ______________________

  THE TRUSTEES OF COLUMBIA UNIVERSITY IN
          THE CITY OF NEW YORK,
               Plaintiff-Appellee

                             v.

      GEN DIGITAL INC., FKA SYMANTEC
  CORPORATION, FKA NORTONLIFELOCK, INC.,
                 Defendant

 QUINN EMANUEL URQUHART & SULLIVAN, LLP,
          Sanctioned Party-Appellant
            ______________________

                        2024-1244
                  ______________________

    Appeal from the United States District Court for the
 Eastern District of Virginia in No. 3:13-cv-00808-MHL,
 Chief Judge M. Hannah Lauck.
                 ______________________

                 Decided: March 11, 2026
                 ______________________

     JEFFREY B. WALL, Sullivan & Cromwell LLP, Washing-
 ton, DC, argued for plaintiff-appellee. Also represented by
 OLIVER ENGEBRETSON-SCHOOLEY, MORGAN L. RATNER;
 GARRARD R. BEENEY, STEPHEN J. ELLIOTT, ALEXANDER N.
 GROSS, DUSTIN GUZIOR, New York, NY.

    PAUL D. CLEMENT, Clement & Murphy, PLLC,
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 2        TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC.




 Alexandria, VA, argued for sanctioned party-appellant.
 Also represented by JOSEPH DEMOTT, C. HARKER RHODES,
 IV.
                 ______________________

         Before DYK, PROST, and REYNA, Circuit Judges.
 DYK, Circuit Judge.
     The Trustees of Columbia University in the City of
 New York (“Columbia”) brought suit against Gen Digital,
 Inc., which markets the Norton software brand, (“Norton”)
 asserting infringement of several patents, including
 United States Patent Nos. 8,601,322 (the “’322 patent”)
 and 8,074,115 (the “’115 patent”), and seeking correction of
 inventorship as to United States Patent No. 8,549,643 (the
 “’643 patent”) owned by Norton. In a companion case,
 No. 2024-1243, Norton appeals the judgment of infringe-
 ment with respect to the ’322 and ’115 patents. In a sepa-
 rate opinion issued today in that companion case, we
 address issues concerning patent ineligibility, infringe-
 ment, foreign sales, enhanced damages, and attorneys’
 fees. This case involves an appeal by Norton’s counsel,
 Quinn Emanuel Urquhart & Sullivan, LLP (“Quinn”), from
 a finding of civil contempt. The contempt issue arose in
 connection with Columbia’s claims for correction of inven-
 torship of the ’643 patent owned by Norton, claims not in-
 volved in the other appeal. 1
     The ’643 patent issued on October 1, 2013, listing Nor-
 ton employee Darren Shou as the sole inventor. Columbia
 contended that Columbia professors Salvatore Stolfo and
 Angelos Keromytis were the true and only inventors of the



     1   As discussed below, based on a jury verdict, the dis-
 trict court entered a judgment for correction of inventor-
 ship of the ’643 patent, and Norton did not appeal that
 determination.
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 ’643 patent, or in the alternative, joint inventors of the pa-
 tent with Mr. Shou. In connection with the inventorship
 issue, Columbia argued that Norton’s counsel, Quinn, im-
 properly represented both Norton and a former employee
 of Norton, Marc Dacier, and improperly prevented Dr. Dac-
 ier from testifying in support of Columbia’s inventorship
 claims.
     The district court agreed that Quinn had a conflict of
 interest, which it concluded automatically terminated the
 representation of Dr. Dacier, and ordered Quinn to disclose
 its allegedly privileged communications with Dr. Dacier.
 Quinn refused, and the court found Quinn in civil con-
 tempt, imposing as a sanction a negative inference that
 Dr. Dacier would have testified that Quinn acted improp-
 erly, supporting Columbia’s motion for enhanced damages
 and attorneys’ fees for infringement of the ’332 and ’115 pa-
 tents in the companion case.
    We reverse the order requiring Quinn to disclose its
 communications with Dr. Dacier and the order holding
 Quinn in contempt.
     As a result, in the companion case we also set aside the
 district court’s award of enhanced damages and attorneys’
 fees since they rested in part on the improper contempt
 finding.
                        BACKGROUND
                               I
     As discussed in detail in our opinion in the companion
 case, in December 2013, Columbia brought suit against
 Norton in the Eastern District of Virginia claiming in-
 fringement of the ’322 patent and ’115 patent and seeking
 correction as to inventorship of the ’643 patent. After trial,
 the jury found infringement of the ’322 and ’115 patents
 and rejected Norton’s affirmative defenses. Norton ap-
 pealed the infringement judgment as to the ’322 and
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 4       TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC.




 ’115 patents. That appeal is resolved in the companion
 case.
     Relevant to this case, Columbia asserted that
 Dr. Stolfo and Dr. Keromytis were the only inventors of the
 ’643 patent, or alternatively that they were joint inventors
 with Mr. Shou. After trial, the jury returned a verdict that
 Dr. Stolfo and Dr. Keromytis were joint inventors of the
 ’643 patent, and the district court granted judgment ac-
 cordingly. Norton does not challenge the inventorship de-
 termination as to the ’643 patent. However, in the course
 of post-trial proceedings, the district court found Quinn,
 Norton’s counsel, in civil contempt. In this appeal, Quinn
 challenges the contempt finding. The complex and some-
 what confusing background of that determination is as fol-
 lows.
                              II
     During discovery, with respect to the inventorship
 claim, Norton identified an employee, Dr. Dacier, as a po-
 tential witness to the development of the invention de-
 scribed in the ’643 patent. Dr. Dacier soon after left
 Norton. However, Columbia sought to depose Dr. Dacier.
 As is common with respect to former employees, Norton of-
 fered to provide counsel to Dr. Dacier. Norton’s counsel,
 Quinn, and Dr. Dacier entered into a retainer agreement.
 The agreement provided that Quinn’s representation of
 Dr. Dacier was “in connection with litigation between [Nor-
 ton] and [Columbia] pending in the Eastern District of Vir-
 ginia” and that it “would include, for example, representing
 [him] in connection with [his] production of documents or
 any deposition in connection with this litigation.”
 J.A. 16566. 2 The agreement also provided that Quinn’s



     2   Citations to the J.A. refer to the Joint Appendix
 filed by the parties in the companion case. No. 24-1243,
 Dkt. No. 59.
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 representation of Dr. Dacier was “conditioned on the fact
 that [he] and [Norton] share a common interest in the mat-
 ters,” and that Dr. Dacier may terminate the relationship
 at any time “by providing [Quinn] with written notice to
 that effect.” J.A. 16567. Quinn advised Columbia’s counsel
 that Dr. Dacier was represented by Quinn and that (as he
 was no longer a Norton employee and resided in France) he
 was not subject to any subpoena issued by the district
 court. Quinn stated that Dr. Dacier was nonetheless will-
 ing to appear for a deposition, which was held on Au-
 gust 19, 2014, in Belgium.
      During Dr. Dacier’s deposition, he testified as to the de-
 velopment of the invention relied on in Mr. Shou’s patent
 application, including activities involving the Columbia
 professors (who claimed to have invented the technology).
 Dr. Dacier did not testify directly that the Columbia pro-
 fessors made inventive contributions to the invention
 claimed in Mr. Shou’s ’643 patent application, but Colum-
 bia nonetheless later argued, and the district court agreed,
 that his testimony supported Columbia’s inventorship the-
 ory.
      After the deposition, the case was stayed for several
 years. Issues of infringement were litigated on appeal
 when Columbia conceded that the district court’s initial
 claim construction precluded its infringement claims and
 appealed. We overturned the construction of one of the
 terms and remanded for further proceedings. Trs. of Co-
 lumbia Univ. v. Symantec Corp., 811 F.3d 1359, 1370–71
 (Fed. Cir. 2016). Meanwhile, Norton sought inter partes
 review of the asserted patents, which resulted in the Pa-
 tent Trial and Appeal Board’s finding unpatentable many
 of the remaining claims, leaving claims 2, 11, and 27 of the
 ’322 patent and claim 2 of the ’115 patent to be resolved in
 further district court proceedings. Nothing in the first ap-
 peal or the inter partes review proceedings affected the
 ’643 patent inventorship claims. When the case resumed
 in the district court in August of 2018, Quinn once again
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 6       TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC.




 identified Dr. Dacier as a potential witness in connection
 with the inventorship claims and instructed Columbia’s
 counsel that Dr. Dacier should be contacted only through
 Quinn. J.A. 14306–07.
     However, while the case was stayed, Dr. Keromytis
 and Dr. Dacier, in either 2017 or 2018, met each other at a
 professional event and discussed the litigation.
 Dr. Keromytis’s declaration states that he told Columbia’s
 counsel that Dr. Dacier expressed “he was sorry about
 what Norton had done with the decoy technology” that
 formed the basis of the ’643 patent, that “he was against
 Norton’s decisions with respect to patenting [the Columbia
 professors’] technology,” and that “he thought what [Nor-
 ton was] doing was wrong,” 3 suggesting in the district
 court’s view that “Norton improperly omitted the profes-
 sors as inventors or co-inventors of the ’643 patent,”
 J.A. 52. Based on a later conversation that took place in
 2019, Dr. Keromytis stated that he believed that Dr. Dac-
 ier would testify on Columbia’s behalf at trial regarding the
 inventorship claim.
     On October 28, 2019, Dr. Keromytis, via email, con-
 nected Columbia’s counsel with Dr. Dacier for the purpose
 of determining if Dr. Dacier was still represented by coun-
 sel. Columbia’s counsel then reportedly had a telephone
 call with Dr. Dacier during which Dr. Dacier “unequivo-
 cally answered that he was not represented by counsel.”
 J.A. 14322. Columbia then asked if he would be willing to
 testify at trial, and Dr. Dacier stated that he wanted to talk
 to Norton and his daughter, a lawyer, first.
     Thereafter in November 2019, Dr. Dacier sent an email
 to a Norton employee, Hugh Thompson, who was not a



     3   Exhibit BB to Columbia’s Opp. to Mots. in Limine
 at 2, Trs. of Columbia Univ. v. Symantec Corp., No. 3:13-
 cv-808 (E.D. Va. Mar. 4, 2022), Dkt. No. 803-29.
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 lawyer, in which Dr. Dacier stated that Columbia’s counsel
 reached out to him and that he wished to “obtain . . . con-
 firmation that [Norton] does not consider that the law-
 yer . . . present at [his] deposition is still representing
 [him]” and to confirm that he was “not bound by any kind
 of contract or obligation with [Norton] that would prevent
 [him] from responding positively to the request to attend
 the trial.” 4 Dr. Dacier reportedly received no response




    4   The entire message stated:
    Dear Hugh,
    my [sic] name is Marc Dacier. I’m a former Syman-
    tec employee. I used to be senior director within
    Symantec Research. This was before your arrival
    within the company. I was managing teams in
    France, Ireland and in the US (Herndon).
    I’m sending you this note regarding the lawsuit
    that Columbia University has filed against Syman-
    tec in 2013, the trial date of which has now been
    defined as end of May 2020.
    This lawsuit is related to a patent filed by Darren
    Shou who was working for me at that time, patent
    filed without me knowing it.
    I have been asked to depose in 2014 as a fact wit-
    ness. My testimony has been recorded in Brussels,
    Belgium. Symantec had sent an attorney to assist
    me. For me this was an old story and I had almost
    forgot about it.
    Now, I have been contacted by the lawyers from Co-
    lumbia University, asking me to come in May to
    testify as a fact witness at the trial ; to repeat what
    I have already said in 2014.
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 8      TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC.




     They have asked me if I had a counsel representing
     me. I think I do not but, to avoid any problem, I
     prefer to reach out to you to obtain your confirma-
     tion that Symantec does not consider that the law-
     yer, paid by Symantec, that was present at my
     deposition is still representing me, since I have left
     the company. I am not asking for Symantec to rep-
     resent me. I am just asking if Symantec considers
     that it does because, if yes, these lawyers are only
     allowed to speak to your lawyers and not to me di-
     rectly.
     Also, assuming Symantec lawyers are not repre-
     senting me, I would like you to confirm that I’m not
     bound by any kind of contract or obligation with
     Symantec that would prevent me from responding
     positively to the request to attend the trial. As I
     said, I don’t want any trouble and want to make
     sure that I’m not violating any rule or law that I
     would not be aware of.
     I am sorry to ask you these questions but all the
     people I used to interact with such as the CEO or
     the past CTO(s), are now gone. Darren Shou is, as
     I understand it, your direct report and I suppose
     that you are looking into this lawsuit and its con-
     sequences. This is why I choose to write to you.
     Thank you very much for taking the time to re-
     spond to me. In the absence of any reply, I will con-
     sider that you implicitly replied negatively to my
     both requests, ie Symantec is not representing me
     and I’m free to go testify.
     All the best
     M. Dacier
 J.A. 14326–27.
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 from Dr. Thompson despite following up. In a later email
 sent April 10, 2020, Columbia’s counsel stated to Quinn
 that Dr. Dacier met with Columbia’s counsel in February
 2020 to discuss his testimony.
     In March 2020, Columbia included Dr. Dacier on its
 witness list in preparation for trial. An email thread filed
 by Columbia shows that Quinn then sent an email to
 Dr. Dacier to inquire if he had communicated with Colum-
 bia. Dr. Dacier responded, confirming that he had commu-
 nicated with Columbia after his emails to Dr. Thompson
 went unanswered. In-house counsel at Norton then
 emailed Dr. Dacier to confirm that Quinn still represented
 him. In a June 2020 declaration Dr. Dacier supplied to
 Quinn, he confirmed that Quinn represented him and con-
 tinued to represent him in connection with the litigation.
 Columbia appears to have ceased communications with
 Dr. Dacier thereafter.
                              III
     In May 2020, Quinn sought sanctions against Colum-
 bia for contacting Dr. Dacier despite his being represented
 by counsel. In September 2021, the district court denied
 sanctions, finding “Columbia reasonably believed that
 Dr. Dacier was not represented by defense counsel.”
 J.A. 17738. However, the district court concluded that “[i]t
 remains undetermined whether Dr. Dacier was or was not
 represented by Norton’s attorneys in October 2019” when
 Columbia’s counsel contacted him. J.A. 17738 n.3.
     On October 21, 2021, Quinn represented to Columbia
 that Dr. Dacier, who moved to Saudi Arabia, had decided
 not to travel to the United States to attend the trial. Quinn
 thereafter emailed Columbia’s counsel on November 18,
 2021, to state that “Dr. Dacier has been informed of the
 [September 2021] order, including that the Court con-
 cluded he is represented by Norton’s counsel,” an inaccu-
 rate statement given that the representation issue was left
 “undetermined.” Exhibit QQ to Columbia’s Opp. to Mots.
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 10     TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC.




 in Limine at 2, Trs. of Columbia Univ. v. Symantec Corp.,
 No. 3:13-cv-808 (E.D. Va. Mar. 4, 2022), Dkt. No. 803-44.
     Norton then moved in limine to exclude argument and
 comments related to Dr. Dacier’s absence at trial. Colum-
 bia opposed and argued that it should be granted a missing
 witness instruction and that its witnesses, Dr. Stolfo and
 Dr. Keromytis, should be permitted to testify as to state-
 ments Dr. Dacier made to them under the residual hearsay
 exception in Federal Rule of Evidence 807 because
 “Dr. Dacier wanted to appear at trial to speak out against
 Norton’s misconduct, and his current decision not to attend
 trial . . . was procured by Norton.” J.A. 20827. On
 March 15, 2022, the district court denied Norton’s in limine
 motion to exclude; granted Columbia’s request for a miss-
 ing witness instruction and to allow the Columbia profes-
 sors to testify as to Dr. Dacier’s statements; and sua sponte
 ruled on what it perceived as an ethical issue in the case.
     First, based on Dr. Keromytis’s declaration, the district
 court determined that there was a conflict of interest in
 Quinn’s representation of Dr. Dacier because he expressed
 regret regarding Norton’s conduct vis-à-vis the ’643 patent
 and that the period of the purported conflict dated back to
 2017. Second, the district court determined that the ap-
 pearance of this conflict “void[ed] the retainer agreement”
 between Dr. Dacier and Quinn. J.A. 48. Third, the district
 court found that Quinn misrepresented the court’s ruling
 by telling Dr. Dacier that the district court concluded that
 Quinn represented Dr. Dacier.
     Finally, the district court ordered Quinn to “disclose on
 the record in writing any information garnered from
 Dr. Dacier during the period their representation of
 Dr. Dacier was a conflict” and to do so “no later than
 March 16, 2022”—one business day after the district
 court’s order (the “Disclosure Order”). J.A. 55 n.7.
     On March 16, 2022, Quinn filed a notice refusing to dis-
 close any communications and asserting attorney-client
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 privilege. Norton moved for reconsideration and a stay of
 trial to resolve the conflict issue, but the district court de-
 nied the motion. Quinn then withdrew its representation
 of Dr. Dacier and submitted a declaration from a Quinn
 lawyer summarizing several interactions with Dr. Dacier.
 For example, the declaration describes a conversation pre-
 ceding Dr. Dacier’s June 2020 declaration, stating
 “Dr. Dacier stated that he never intended to terminate
 Quinn Emmanuel’s representation, confirmed that he
 wanted to continue to be represented by Quinn Emanuel in
 the above-captioned action, and stated that he was willing
 to sign a declaration attesting to that fact.” J.A. 35940.
     Norton retained new counsel, Latham & Watkins LLP
 (“Latham”), to represent Norton at trial together with
 Quinn. An email thread submitted by Columbia shows
 that Latham reached out to Dr. Dacier to encourage him to
 attend trial, but that he refused given the short notice. In
 his email response to Latham, Dr. Dacier reported that
 Quinn “repeatedly told [him] that there was no need for
 [him] to do anything, that they did not want [him] to do
 anything, [and] that [his] testimony in Brussels [at the dep-
 osition] was all that was needed.” J.A. 35889. He also
 stated that he had nothing additional to testify about be-
 yond his deposition testimony, but that he considered that
 testimony to be “harmful for Norton’s case,” and that he
 “can see now why the Quinn team has done what they have
 done over the years, while pretending to ‘represent’ [him].”
 J.A. 35887.
                               IV
      Following trial, although Columbia had succeeded on
 its inventorship claim, Columbia continued to seek Quinn’s
 compliance with the Disclosure Order to support Colum-
 bia’s claim of litigation misconduct by Quinn that would
 support an award of enhanced damages for infringement of
 the ’322 and ’115 patents or attorneys’ fees. Columbia also
 moved for a show cause order as to why Norton should not
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 12     TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC.




 be held in civil contempt for refusing to comply with the
 Disclosure Order. Specifically, Columbia requested an ev-
 identiary hearing to make a finding of contempt and “meas-
 ured sanctions until compliance.” J.A. 43926. Columbia
 then also moved for enhanced damages and attorneys’ fees,
 again as to the theory that Norton’s refusal to comply was
 litigation misconduct.
     Without holding an evidentiary hearing, the district
 court found Quinn in civil contempt for failure to comply
 with the Disclosure Order and imposed as a sanction a neg-
 ative inference that Quinn’s conduct in the litigation was
 “egregious” for the purpose of enhanced damages and at-
 torneys’ fees (the “Contempt Order”). J.A. 98. The district
 court stated that this sanction was for the “purpose of com-
 pensating the movant [Columbia] for the losses sustained
 as a result of the contempt.” J.A. 97. Quinn appeals. We
 have jurisdiction under 28 U.S.C. § 1295(a)(1).
                        DISCUSSION
     Quinn argues that the Disclosure Order was not a valid
 decree because it improperly required Quinn to produce
 privileged communications and that the contempt finding
 should be reversed. To establish civil contempt, under
 Fourth Circuit law, it must be shown by clear and convinc-
 ing evidence that the alleged contemnor knowingly vio-
 lated a “valid decree” that was in the opposing party’s
 favor, to the detriment of the opposing party. United States
 v. Ali, 874 F.3d 825, 831 (4th Cir. 2017); dmarcian, Inc.
 v. dmarcian Eur. BV, 60 F.4th 119, 145 (4th Cir. 2023) (cit-
 ing Fed. Trade Comm’n v. Pukke, 53 F.4th 80, 101 (4th Cir.
 2022)). “[R]eversal of the underlying order ordinarily in-
 validates any civil contempt sanctions predicated thereon.”
 McLean v. Cent. States, Se. & Sw. Areas Pension Fund,
 762 F.2d 1204, 1210 (4th Cir. 1985); accord ePlus, Inc.
 v. Lawson Software, Inc., 789 F.3d 1349, 1357–58, 1357 n.8
 (Fed. Cir. 2015) (citing Worden v. Searls, 121 U.S. 14, 26
 (1887)). When the disputed order requires the disclosure
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 of confidential information, this rule is especially im-
 portant because “appellate courts cannot always ‘unring
 the bell’ once the information has been released.” See
 Waste Mgmt. of Wash., Inc. v. Kattler, 776 F.3d 336, 342
 (5th Cir. 2015). Therefore, “a party’s good-faith claim of at-
 torney-client privilege can serve as a valid defense to a
 finding of contempt.” See id.; accord In re Allen, 106 F.3d
 582, 608–09 (4th Cir. 1997) (reversing contempt order
 predicated on attorney’s refusal to disclose privileged infor-
 mation).
                   I.     PRELIMINARY ISSUES
     Columbia does not dispute this general rule. However,
 Columbia raises preliminary arguments as to why we
 should not address the validity of the Contempt Order.
 First, Columbia argues that Norton forfeited its challenge
 to the validity of the Disclosure Order by failing to raise the
 issue in its opposition to Columbia’s motion for an order to
 show cause. We do not agree. In the notice to the district
 court filed on March 16, 2022, in response to the Disclosure
 Order, Quinn challenged the validity of the Disclosure Or-
 der in part on invalidity, arguing that the district court
 could not require the disclosure of communications pro-
 tected by the attorney-client privilege. Then, in opposition
 to Columbia’s motion for an order to show cause, Quinn ar-
 gued that it acted properly by “asserting the attorney-client
 privilege in response to the Court’s March 15, 2022 order,”
 before attempting to comply with the order without breach-
 ing its duties of confidentiality. J.A 43948. The district
 court also recognized that Quinn “claim[ed] the attorney-
 client privilege” when it “refused to comply” with the Dis-
 closure Order. J.A. 78. Quinn did not forfeit the argument
 that the Disclosure Order was invalid.
     Second, Columbia argues that Quinn was required to
 “request[] in camera review,” i.e., revision of the district
 court’s order so that it provided for in camera review rather
 than public disclosure. Appellee’s Br. 82. Columbia cites
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 14     TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC.




 no authority to support such a requirement, and a review
 of similar cases indicates there is no such requirement. See
 Waste Mgmt. of Wash., 776 F.3d at 343 (order requiring
 disclosure of privileged documents was invalid despite no
 apparent request for in camera review of the privileged
 documents); In re King’s Daughters Health Sys., 31 F.4th
 520, 527 (6th Cir. 2022) (recognizing that a non-party who
 “first disobey[s] [an] order and suffer[s] a contempt cita-
 tion” may raise a privilege challenge to the order on appeal
 without suggesting that the parties move for reconsidera-
 tion or in camera review (quoting United States ex rel.
 Pogue v. Diabetes Treatment Ctrs. of Am., Inc., 444 F.3d
 462, 471 (6th Cir. 2006))). Quinn was entitled to challenge
 the validity of the order for public disclosure.
     Third, Columbia argues that Quinn could not assert
 the attorney-client privilege without first contacting
 Dr. Dacier and determining whether he wanted to assert
 the attorney-client privilege. Generally, the proponent of
 the attorney-client privilege must show, inter alia, that
 “the privilege has been (a) claimed . . . by the client.” Haw-
 kins v. Stables, 148 F.3d 379, 383 (4th Cir. 1998) (quoting
 United States v. Jones, 696 F.2d 1069, 1072 (4th Cir.
 1982)). Although “the client must claim the privilege” be-
 cause “[t]he client is the holder of the attorney-client priv-
 ilege,” id. at 384 n.4 (citing In re Grand Jury Procs.,
 727 F.2d 1352, 1355–56 (4th Cir. 1984)), that does not
 mean counsel may not assert the privilege on behalf of a
 client, see United States v. Edgar, 82 F.3d 499, 508 (1st Cir.
 1996) (“A lawyer also has an obligation to assert privilege
 on behalf of a client.”); In re Sarrio S.A., 119 F.3d 143, 147
 (2d Cir. 1997) (noting that privilege can be asserted by “one
 authorized to do so on the client’s behalf”); Sandra T.E.
 v. S. Berwyn Sch. Dist. 100, 600 F.3d 612, 618 (7th Cir.
 2009) (“The privilege belongs to the client, although an at-
 torney may assert the privilege on the client’s behalf.” (cit-
 ing United States v. Smith, 454 F.3d 707, 713 (7th Cir.
 2006))); Haines v. Liggett Grp., Inc., 975 F.2d 81, 90
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 (3d Cir. 1992) (“Although the privilege belongs to the cli-
 ent . . . an attorney may assert the privilege on the client’s
 behalf.”); United States v. Hankins, 581 F.2d 431, 438
 (5th Cir. 1978) (“[T]he attorney-client privilege may be as-
 serted either by the client or by the attorney on behalf of
 the client . . . .”); see also Swidler & Berlin v. United States,
 524 U.S. 399, 410–11 (1998) (counsel may assert privilege
 on behalf of deceased client). Columbia asks us to require
 that counsel consult with the client and await a response
 before asserting the privilege on the client’s behalf. There
 is no such requirement.
     Fourth, Columbia argues that any privilege was
 waived based on an email Dr. Dacier sent to both Colum-
 bia’s counsel and Quinn explaining that he had been in con-
 tact with Columbia’s counsel. This email was not a waiver
 over all of Dr. Dacier’s communications with Quinn regard-
 less of the subject matter, and even if it were, the district
 court made no determinations that Dr. Dacier had waived
 any privilege. Instead, it noted that Quinn asserted the
 privilege on his behalf.
                II.    THE VALIDITY OF THE ORDER
      We turn to the issue of the Disclosure Order’s validity.
 There is no question that Dr. Dacier retained Quinn to rep-
 resent him and that he did not terminate the relationship
 in writing as provided for by the agreement. The district
 court had made no determination as to whether Dr. Dacier
 otherwise terminated the relationship. The question is
 whether, as the district court held, the attorney-client priv-
 ilege was automatically terminated based on Quinn’s con-
 flict of interest, such that Quinn could not assert a privilege
 “during the period [Quinn’s] representation of Dr. Dacier
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 16       TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC.




 was a conflict.” J.A. 55. The court later clarified that this
 period was “at least in 2017 through 2020.” 5 J.A. 59 n.3.
     Even if there were a conflict of interest that warranted
 disqualification, the district court erred in concluding that
 the conflict of interest automatically terminated the attor-
 ney-client relationship between Dr. Dacier and Quinn and
 eliminated the privilege. The relevant cases hold that the
 attorney-client privilege is not vitiated because of the ex-
 istence of an attorney-client conflict. For example, in Eu-
 reka Investment Corp. v. Chicago Title Insurance Co., the
 D.C. Circuit considered a case where a single attorney rep-
 resented both an insured party and the insurer. 743 F.2d
 932, 936–38 (D.C. Cir. 1984). There, the allegedly privi-
 leged communications “were made not only after the inter-
 ests of [the parties] diverged, but after their common
 attorney knew they diverged.” Id. at 937. The court held
 that those communications were still privileged, reasoning
 that the client’s privilege “should not be defeated solely be-
 cause the attorney’s conduct was ethically questionable.”
 Id. at 938. Similarly, in In re Teleglobe Communications
 Corp., in-house counsel for a parent company discussed a
 legal issue with the in-house counsel for one of its subsidi-
 aries prior to the subsidiary’s bankruptcy. 493 F.3d 345,
 354–55 (3d Cir. 2007). The court held that, although the
 parent’s in-house counsel acted as attorney to both the par-
 ent and the subsidiary, and a conflict of interest arose be-
 tween the two in bankruptcy proceedings, this conflict did
 not vitiate the privilege over communications between the
 parent and its in-house counsel. Id. at 381.
     A contrary rule would be unfairly damaging to a good-
 faith client and would be tantamount to punishing the cli-
 ent for the lawyer’s impropriety. See Va. R. Prof. Conduct,


      5 The Disclosure Order itself inconsistently refers to
 statements that Dr. Dacier made in 2019 and his “2017-
 2019 comments.” E.g., J.A. 43, 47–49, 52.
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 TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC.         17



 Scope (“In reliance on the attorney-client privilege, clients
 are entitled to expect that communications within the
 scope of the privilege will be protected against compelled
 disclosure.”); see also Restatement (Third) of Law Govern-
 ing Lawyers §§ 31–32 (recognizing a lawyer may have a
 duty to withdraw from representation of a client but also
 noting that such a duty arising does not automatically ter-
 minate the representation). The existence of a conflict may
 subject the attorney “to disciplinary sanctions and mal-
 practice liability,” see Restatement § 31, cmt. a, but it does
 not vitiate the attorney-client privilege. See also New Phx.
 Sunrise Corp. v. Comm’r of Internal Revenue., 408 F. App’x
 908, 919 (6th Cir. 2010) (“[T]he fact that an attorney has a
 conflict of interest does not mean that the client forfeits the
 benefit of the attorney-client privilege.”). Indeed, at oral
 argument, Columbia conceded that the privilege would ex-
 ist until the client waived it.
     Columbia offers one final argument: that the Disclo-
 sure Order should be sustained because it was an appro-
 priate exercise of the district court’s authority to determine
 if Quinn in fact represented Dr. Dacier during the period
 beginning in 2017. The district court indeed described the
 purpose of the order as “intend[ing] to eliminate confusion
 regarding Dr. Dacier’s representation and willingness to
 testify at trial.” J.A. 90. If the Disclosure Order were de-
 signed to resolve the representation issue, it would have
 been justified only if the court had ordered in camera pro-
 duction. The need to inquire as to the representation would
 not support public disclosure of the communications with-
 out resolution of the representation issue. Columbia rec-
 ognized this at oral argument, conceding that the district
 court’s order was “potentially problematic.” Oral Arg.
 at 29:25–30.
      Because we find that the Disclosure Order was invalid,
 it follows that it cannot be the basis for a finding of civil
 contempt. We therefore reverse both the Disclosure Order
 and the Contempt Order. We do not address the propriety
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 18        TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC.




 of alternative sanctions for Quinn’s conduct unrelated to
 the order to produce privileged material.
           III.   COLUMBIA’S MOTION TO SUPPLEMENT THE
                                RECORD
     Columbia has also moved to supplement the record
 with a new declaration from Dr. Dacier testifying that if he
 had been aware of the dispute over the Disclosure Order,
 he would have waived the attorney-client privilege protect-
 ing the communications and that he never changed his
 mind about being willing to testify. However, this declara-
 tion was not considered by the district court in its proceed-
 ings. The propriety of the district court’s orders must rest
 solely on the record before it. This is not the “rare in-
 stance[]” where “the circumstances of the case require” us
 to look beyond “the record presented at the court below.”
 See Biery v. United States, 818 F.3d 704, 710–11 (Fed. Cir.
 2016) (citing Del. Valley Floral Grp. v. Shaw Rose Nets,
 LLC, 597 F.3d 1374, 1380 n.1 (Fed. Cir. 2010)). We deny
 the motion.
                          CONCLUSION
        We reverse the Disclosure Order and the Contempt Or-
 der.
                          REVERSED
                             COSTS
 No costs.