Comfort Line Products, Inc. v. Oceantis LLC
2:17-cv-00198
M.D. Fla.Aug 18, 2017Background
- Comfort Line hired Michael J.P. O’Brien for 14 years; while employed he invented and assigned a patent for a collapsible spa unit used in Comfort Line’s SPA-N-A-BOX product.
- O’Brien later left and formed Oceantis LLC; Comfort Line authorized Oceantis to resell and service SPA-N-A-BOX but did not authorize manufacturing its own versions.
- Comfort Line alleges Oceantis and O’Brien (through his Estate) manufactured and sold infringing collapsible spa units using Comfort Line parts or substantially identical parts, and sued for patent infringement under 35 U.S.C. § 271.
- The Estate moved to dismiss, arguing Comfort Line failed to present a claim in Florida probate court against the decedent’s estate (a condition precedent under Fla. Stat. § 733.702).
- Comfort Line argued federal patent law preempts Florida probate requirements because federal courts have exclusive jurisdiction over patents (28 U.S.C. § 1338(a)).
- Court applied Federal Rule of Civil Procedure 17(b) (state law governs capacity to be sued), evaluated conflict preemption, and found Florida probate claim requirement not preempted; dismissed without prejudice for failure to allege presentation of a probate claim, and permitted amendment.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Comfort Line needed to present a claim in Florida probate court against the decedent’s estate before suing for patent infringement | Federal patent law is exclusive and preempts state probate procedures, so no probate claim was required before filing in federal court | Florida probate law (Fla. Stat. § 733.702) controls capacity to sue an estate under Fed. R. Civ. P. 17(b); Comfort Line must present a probate claim as a condition precedent | Court held state probate filing requirement is not preempted; Complaint dismissed for failure to allege presentation of a probate claim (leave to amend) |
| Whether Florida probate requirement conflicts with Congress’s intent in the Patent Act | Patent jurisdiction exclusivity implies federal scheme should supersede state probate rules | Probate rules do not physically conflict with federal patent jurisdiction and do not obstruct Congressional intent; they serve traditional state interests in settling estates | Court held no conflict preemption: it is possible to comply with both, and probate law does not frustrate federal patent objectives |
Key Cases Cited
- Cal. Fed. Sav. & Loan Ass’n v. Guerra, 479 U.S. 272 (discusses modes of federal preemption analysis)
- Witco Corp. v. Beekhuis, 38 F.3d 682 (3d Cir. 1994) (federal environmental statute did not preempt state probate claim procedures)
- English v. Gen. Elec. Co., 496 U.S. 72 (1990) (presumption against preemption in areas traditionally occupied by states)
- Dow Chem. Co. v. Exxon Corp., 139 F.3d 1470 (Fed. Cir. 1998) (conflict preemption principles)
- Hunter Douglas v. Harmonic Design, Inc., 153 F.3d 1318 (Fed. Cir. 1998) (discussing field preemption in patent context)
- Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999) (overruling aspects of prior Federal Circuit guidance cited on preemption)