United States District Court, D. Maine
AMENDED ORDER VACATING THE MAGISTRATE JUDGE'S DISQUALIFICATION OF DR. MARK ACKERMAN AS AN EXPERT WITNESS FOR MICROSOFT CORPORATION 
JOHN A. WOODCOCK, Jr., District Judge.
In this patent infringement suit over U.S. Patent No. 6, 724, 403 (issued Apr. 20, 2004), SurfCast, Inc. (SurfCast) sought to preclude Microsoft Corporation (Microsoft) from using Dr. Mark Ackerman as a retained expert witness. The Magistrate Judge disqualified Dr. Ackerman on the ground that SurfCast established a confidential relationship with him in a single twenty-three minute telephone call one year before Microsoft retained him as an expert witness. Before the Court is Microsoft's objection to the Magistrate Judge's disqualification order. The Court, concluding that the legal standard for disqualification applied by the Magistrate Judge was too lenient to SurfCast, vacates the disqualification and remands for the Magistrate Judge to determine in the first instance whether SurfCast established a relationship with Dr. Ackerman sufficiently substantial to make disqualification an appropriate remedy.
I. LEGAL STANDARD
When the Magistrate Judge issues an order on a non-dispositive matter, the Court reviews factual findings for clear error and legal findings de novo. See PowerShare, Inc. v. Syntel, Inc., 597 F.3d 10, 15 (1st Cir. 2010); CHARLES ALAN WRIGHT, ARTHUR R. MILLER & RICHARD L. MARCUS, 12 FEDERAL PRACTICE AND PROCEDURE § 3069, at 350-56 (2d ed. 1997 & Supp. 2013).
Because legal issues will often be entwined with factual issues that are in turn tinged with aspects of discretion, there should customarily be little question that a district judge retains authority to modify an unwarranted action by a magistrate judge even after assigning a matter to the magistrate judge for decision.
WRIGHT, MILLER & MARCUS, supra, at 355. "The decision to disqualify an expert is discretionary." Thompson, I.G., L.L.C. v. Edgetech I.G., Inc., 11-12839, 2012 WL 3870563, at *2 (E.D. Mich. Sept. 6, 2012).
A. Procedural Posture
On August 27, 2013, the Magistrate Judge presided over a hearing on certain discovery disputes between SurfCast and Microsoft. Report of Hr'g and Order re: Disc. Disputes (ECF No. 111). At that hearing, SurfCast objected to Microsoft's use of Dr. Ackerman as an expert witness. Id. at 2. The Magistrate Judge, over Microsoft's objection, ordered SurfCast to produce sworn statements from Attorney Pascal and Dr. Ackerman, as well as certain notes that the SurfCast attorneys took during their 2012 conversation with Dr. Ackerman. Id. The Magistrate Judge considered these documents in camera and ordered both parties to submit letter briefs on the disqualification issue. Id. The Magistrate Judge issued a memorandum decision on September 30, 2013, disqualifying Dr. Ackerman as an expert witness for Microsoft. Memorandum Decision on Mot. to Disqualify Expert Witness (ECF No. 121) ( Mem. Dec. ).
Microsoft filed an objection to the Magistrate Judge's decision on October 10, 2013. Def. Microsoft's Objection to Mem. Dec. (ECF No. 128) ( Def.'s Objection ). With this objection, Microsoft submitted an affidavit by Dr. Ackerman describing his version of his communication with SurfCast. Def.'s Objection Attach. 1 Decl. of Dr. Mark S. Ackerman (ECF No. 128) ( Ackerman Decl. ). SurfCast replied to Microsoft's opposition on October 28, 2013. Pl. Surfcast's Resp. to Def.'s Objection to Mem. Dec. (ECF No. 134) ( Pl.'s Reply ). On October 30, 2013, Microsoft moved for leave to file a reply in support of its objection. Def. Microsoft's Mot. for Leave to File a Reply (ECF No. 136) ( Def.'s Mot for Leave to File Reply ). SurfCast responded in opposition to this motion on October 31, 2013. Pl.'s Objection to Def.'s Mot for Leave to File Reply (ECF No. 137). The Court granted Microsoft's motion, Order Granting Mot. for Leave to File Reply (ECF No. 147), and Microsoft filed its reply on November 27, 2013. Def.'s Reply in Support of Its Objection to Mem. Dec. to Disqualify Expert Witness (ECF No. 148) ( Def.'s Reply ). SurfCast filed a sur-reply on December 11, 2013. Pl.'s Sur-Reply to Def.'s Objection to Mem. Dec. to Disqualify Expert Witness (ECF No. 149) ( Pl.'s Sur-Reply ).
B. Historical Facts
The Court adopts the Magistrate Judge's recital of the facts of this matter. Dr. Ackerman had only one substantive conversation with counsel for SurfCast, Erica Pascal, Esq., and Tiffany Miller, Esq. Mem. Dec. at 1. That conversation took place on August 29, 2012, and lasted twenty-three minutes. Id. Before that telephone conversation, on August 23 or 24, 2012, Attorney Pascal sent Dr. Ackerman via email a confidentiality agreement that she asked him to sign before they could engage in any specific discussion. Id. at 1-2. Dr. Ackerman signed the agreement and returned it to Attorney Pascal that same day. Id. at 2.
On August 29, 2012, Attorney Pascal emailed Dr. Ackerman the patent at issue in this action. Id. Approximately one-half hour later, the twenty-three minute call began. Id. Attorney Pascal and Dr. Ackerman discussed his background. Id. Beyond that, they differ in their recollections of the conversation. Id. They do agree that Dr. Ackerman was not paid, nor was he retained, by SurfCast. Id. It is undisputed that Dr. Ackerman was not asked to work on the case, to perform services in the future, or to decline to perform services for others. Id. There has been no further contact between Dr. Ackerman and any lawyer from Attorney Pascal's firm or from any other representative of SurfCast. Id.
Dr. Ackerman insists that during the August 29th phone call, Attorneys Pascal and Miller did not discuss litigation strategy or the strengths or weaknesses of either party's case. Ackerman Decl. ¶ 8. He further denies that the attorneys revealed any data about the case, suggested that any fact was of particular significance, or otherwise conveyed their views on the case. Id. He further asserts that on August 22, 2013, attorneys for Microsoft, who had by that time retained him as an expert, informed him that they had learned of the non-disclosure agreement, and cautioned him not to disclose any confidential information or any details of his communications with Attorney Pascal's firm. Id. ¶ 11. Dr. Ackerman swears he has complied with the terms of the non-disclosure agreement. Id.
The Magistrate Judge performed an in camera review of the notes of Attorneys Pascal and Miller from their conversation with Dr. Ackerman, as well as a sworn declaration of Attorney Pascal. Mem. Dec. at 5-6. He concluded that Attorneys Pascal and Miller reasonably believed that they had established a confidential relationship with Dr. Ackerman and that they had in fact disclosed confidential information to him. ...