Comfort Line Products, Inc. v. Oceantis LLC et al

Filing 31

ORDER granting 10 Defendant Michael Shawn O'Brien's Motion to Dismiss.Plaintiff Comfort Line Products, Inc. may file an amended complaint in accordance with this Order on or before September 8, 2017. Signed by Judge Sheri Polster Chappell on 8/18/2017. (LMF)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
COMFORT LINE PRODUCTS, INC.,
a Florida corporation
Plaintiff,
v.

Case No: 2:17-cv-198-FtM-99CM

OCEANTIS LLC and MICHAEL
SHAWN O’BRIEN, as Curator of
Estate of Michael J.P. O’Brien,
Defendants.
/
OPINION AND ORDER1
Pending before the Court is the Motion to Dismiss filed by Defendant Michael
Shawn O’Brien, as Curator of the Estate of Michael J.P. O’Brien (“Estate”). (Doc. 10).
Plaintiff Comfort Line Products, Inc. has filed an opposition (Doc. 14), to which the Estate
has filed a reply (Doc. 26). For the following reasons, the Court grants the Estate’s
motion.
BACKGROUND
This is a patent infringement action. (Doc. 1). Michael J.P. O’Brien (“Decedent”)
worked for Comfort Line for fourteen years. While employed there, Decedent invented a

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collapsible spa unit that he patented. He assigned and transferred his interest in the
patent to Comfort Line. Because of the patent, Comfort Line has manufactured, sold,
marketed, and distributed a collapsible spa unit called “SPA-N-A-BOX.”

Decedent

eventually left Comfort Line to start his own company, Oceantis LLC, of which he was the
principal and sole owner.
Comfort Line authorized Oceantis and Decedent to re-sell its SPA-N-A-BOX and
provide customer service and repairs for the product. But Comfort Line did not authorize
Defendants to manufacture and sell their own version of the patented spa units. But that
is what Defendants allegedly did. According to Comfort Line, Defendants “used SPA-NA-Box parts obtained from [it] and/or substantially identical parts to manufacture and sell
[infringing] collapsible spa units.” (Doc. 1 at ¶ 19). Comfort Line thus sues Oceantis and
Decedent’s Estate for patent infringement under 35 U.S.C. § 271.
DISCUSSION
The Estate moves to dismiss this case against it because the Complaint does not
allege that Comfort Line has made a claim against the Estate in Florida probate court,
which is a condition precedent to suit. (Doc. 10). Comfort Line disagrees. It argues that
federal courts have exclusive jurisdiction over patent infringement claims, and thus
federal patent law preempts Florida probate requirements on making a claim against an
estate. (Doc. 14 at 2).
The Court’s starting point is Federal Rule of Civil Procedure 17(b), which governs
an individual’s capacity to be sued in federal court. Under this rule, Florida law will control
an estate’s capacity to be sued. See Fed. R. Civ. P. 17(b) (stating the capacity to be
sued is determined “for all other parties, by the law of the state where the court is

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located”). Rule 17 brings the Court to Florida’s probate code. Section 733.702 provides
that no cause of action against a decedent will survive his death unless a claim is
presented against his estate within specified periods. See Fla. Stat. § 733.702(2). And
a claim not timely filed is barred unless extended by the probate court. See Fla. Stat.
§ 733.702(3). Because Florida’s probate law controls Comfort Line’s ability to sue the
Estate, the Court must decide whether federal patent law preempts the state law.
Answering this question will determine whether Comfort Line had to make a claim in
probate court before filing this suit, as the Estate now alleges.
The United States Constitution grants Congress the power “[t]o promote the
Progress of Science and useful Arts, by securing for limited Times” the exclusive right of
inventors to their discoveries. U.S. Const. art. I, § 8, cl. 8. Under this authority, Congress
passed the Patent Act, 35 U.S.C. §§ 1-376. It provides that federal courts have exclusive
jurisdiction over cases arising under the Patent Act. See 28 U.S.C. § 1338(a) (stating,
“[n]o State court shall have jurisdiction over any claim for relief arising under any Act of
Congress relating to patents”).
Under the Constitution’s Supremacy Clause, federal law may preempt state law by
three methods: explicit preemption, field preemption, and conflict preemption. See Cal.
Fed. Sav. and Loan Ass’n v. Guerra, 479 U.S. 272, 280-81 (1987). The preemption
analysis is a question of congressional intent. Id. at 280. Explicit preemption exists when
Congress preempts state law by stating so in express terms. Field preemption applies
where Congress has enacted a scheme of federal regulation so comprehensive “to make
reasonable the inference that Congress ‘left no room’ for supplementary state regulation.”
Id. at 280-81 (citation omitted); see also Hunter Douglas v. Harmonic Design, Inc., 153

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F.3d 1318, 1333 (Fed. Cir. 1998), overruled on other grounds by Midwest Indus., Inc. v.
Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999). Neither of these bases for
preemption exists here, nor do the parties argue they apply.

This leaves conflict

preemption.
Conflict preemption exists to the extent that a federal and state law conflict. “Such
a conflict occurs either because ‘compliance with both federal and state regulations is a
physical impossibility,’ . . . or because the state law stands ‘as an obstacle to the
accomplishment and execution of the full purposes and objections of Congress” in
executing a statute. Guerra, 479 U.S. at 281 (citations omitted); see also Dow Chem. Co.
v. Exxon Corp., 139 F.3d 1470, 1473 (Fed. Cir. 1998). A court “must ask two questions
in determining whether a state law conflicts with federal law: (1) is it possible to comply
with both laws, and, (2) does the state law stand as an obstacle to the intent of Congress?”
Witco Corp. v. Beekhuis, 38 F.3d 682, 689 (3d Cir. 1994) (citing Guerra, 479 U.S. at 281).
Before answering these questions here, it is important to note that federal
preemption of state law is disfavored, especially in areas of law that states traditionally
occupy. See English v. Gen. Elec. Co., 496 U.S. 72, 79 (1990) (stating where “the field
which Congress is said to have pre-empted includes areas that have been traditionally
occupied by the States, congressional intent to supersede state laws must be clear and
manifest” (internal quotations and citations omitted)). Indeed, for preemption to occur in
an area states traditionally dominate, “there must be a sharp conflict between the state
law and federal policy.” Witco, 38 F.3d at 688 (citation omitted). Because “probate
matters traditionally have been nearly the exclusive concern of the states, there is a
presumption against preemption of state law.” Id. at 688.

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With that in mind, the Court turns to the two questions on preemption. In doing so,
the Court finds Witco Corp. v. Beekhuis, 38 F.3d 682 (3d Cir. 1994) to be instructive. In
that case, Witco sued an estate’s executrix, among others, to recoup costs associated
with an environmental cleanup of land owned by decedent’s company. The pertinent
issue on appeal was whether the three-year statute of limitations for a claim under the
Comprehensive Environmental Response, Compensation, and Liability Act, 42 U.S.C.
§§ 9601 et seq. (“CERCLA”) preempted Delaware’s statutes requiring notice to a
decedent’s estate before filing suit. Witco, 38 F.3d at 684. The Third Circuit held that
CERCLA did not preempt the state statutes. Id.
The Third Circuit examined the two questions for determining conflict preemption.
It found that Witco could comply with both the federal and state statutes because “[o]ne
can notify an estate of a contingent claim [under CERCLA] within eight months of a
decedent’s death, and also file a contribution action within three years of the date of a
judgment for response costs.” Id. at 688. The court also found, “[i]n light of the traditional
reluctance of Congress to preempt state laws which are of significant importance to the
states and traditionally within their province, we decline to read into the CERCLA statute
the congressional intent to except CERCLA claims from state probate laws and
procedures.” Id. at 689. Although Witco is not binding precedent, the Court finds it
analogous to this case and its reasoning compelling.
Here, federal patent law and Florida probate law do not stand it sharp conflict, as
it is possible to comply with both statutes. For instance, Comfort Line could present a
claim to the curator per Florida Statute § 733.02. If the curator objected to the claim,
Comfort Line could sue the Estate in federal court for patent infringement. If Comfort Line

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wins the infringement suit, the probate court will still determine how to divide the Estate’s
assets among valid creditors. At no point does the filing of a statement of claim impede
on federal court’s patent jurisdiction under § 1338(a) and Fla. Stat. § 733.705.
Second, Florida Statute § 733.02 does not stand as an obstacle to congressional
intent. Florida’s interest in swiftly settling its citizens’ estates is undeniably strong. And
probate law has traditionally been within the states’ province. See Witco, 38 F.3d at 689
(“Long-standing precedent recognizes that federal claims against decedents’ estates are
subject to state probate laws and procedures, unless federal law specifically provides
otherwise.” (citations omitted)).

Nothing in the patent law suggests that Congress

intended to preempt state laws governing claims against decedents’ estates or to modify
Florida’s laws on the capacity to be sued. And Comfort Line has not presented any case
law or arguments to persuade the Court otherwise.
In conclusion, the Estate correctly argues that the Complaint is devoid of any
allegation that Comfort Line has satisfied the condition precedent of making a written
claim in probate court. The Court thus grants the Estate’s motion to dismiss.
Accordingly, it is now ORDERED:
(1) Defendant Michael Shawn O’Brien’s Motion to Dismiss (Doc. 10) is GRANTED.
(2) Plaintiff Comfort Line Products, Inc. may file an amended complaint in
accordance with this Order on or before September 8, 2017.
DONE and ORDERED in Fort Myers, Florida this 18th day of August, 2017.

Copies: All Parties of Record

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