Plaintiff Homeland Houswares, LLC ("Homeland") filed a declaratory judgment action for a declaration of non-infringement and invalidity against Sorensen Research and Development Trust ("Sorensen"). Homeland took the deposition of one of the inventors of the patent-in-suit, Mr. Paul Brown. Mr. Brown is the co-inventor of U.S. Patent No. 6,599,460 (the '460 patent), which Homeland's products allegedly infringe. In addition to being a co-inventor, Mr. Brown also conducted testing in support of the patent infringement allegations.

During the deposition of Mr. Brown, Homeland asked the inventor several hypothetical questions which he was instructed by counsel for Sorensen not to answer. Homeland filed a motion to compel answers to the deposition questions.

The district court found that the instructions not to answer the questions were appropriate because the questions were hypothetical and called for expert testimony. "Fed. R. Civ. P. Rule 30(c)(2) provides that a lawyer may instruct a deponent not to answer a question 'when necessary to preserve a privilege, to enforce a limitation ordered by the court, or to present a motion under Rule 309d)(3).' Sorensen correctly claims that the questions Brown was instructed not to answer were hypothetical questions calling for expert testimony contrary to limitations ordered by the Court, in this instance that deadline for expert reports which has not arrived yet."

The district court further explained that the deposition questions were only appropriate for an expert and were not within Mr. Brown's personal knowledge. As a result, the questions were, at best, premature and violated the timing of the expert disclosures set out by the district court in its scheduling order: "Brown had no prior personal knowledge of the 'short shot' molds presented to him at the deposition. There is nothing in the record that Brown knew anything about the source of methodology of the molds and photographs. Every question Brown was instructed not to answer was a hypothetical question calling for expert testimony ('if you understood,' 'if I were to tell you, 'if short shots revealed,' 'if I represented if you.') Rule 26(b)(4)(D) provides that a party may not discover the opinions of a non-testifying expert. The fact that Brown is the inventor of the '460 patent makes no difference. Homeland is not entitled to make Brown their own expert, nor is it fair to expect him to render opinions off the top of his head on matters not within his personal knowledge, and without proper foundation. Only when and if Brown is designated an expert witness can Homeland properly pose the questions in dispute. Homeland, of course, is free to retain its own expert and present its 'short shot" evidence to dispute infringement."

Homeland Housewares, LLC v. Sorensen Research and Development Trust, Case No. CV 11-03720-GW (JEMx) (C.D. Cal. April 16, 2012)