United States District Court, M.D. Florida, Fort Myers Division
OPINION AND ORDER 
SHERIPOLSTERCHAPPELL UNITED STATES DISTRICT JUDGE
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
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
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.
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-N-A-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.
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).
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. SeeFed. 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 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. SeeFla. Stat. § 733.702(2).
And a claim not timely filed is barred unless extended by the
probate court. SeeFla. 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
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. See28 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
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 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 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).
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.
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.
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 ...