Schick Dry Shaver, Inc. v. Motoshaver, Inc. (21 F. Supp. 722, 1937)

McCORMICK, District Judge.

This is a suit in equity for the infringement of three patents. All of the patents are for shaving implements or shaving machines and were issued to Jacob Schick. They are respectively No. 1,721,530, No. 1,747,031, and No. 1,757,978. The first and second named complainant corporations are, respectively, the exclusive licensee and the owner of the patents in suit, and the last-named plaintiff is the sole' distributor throughout the State of California of the “Schick Dry Shaver,” a device which embodies the inventions of the patents in suit.

The defendant companies are California corporations; the first named having a regular and established place of business in Los Angeles, and the other having a regular and established place of business in San Francisco. The defendant Dalmo Manufacturing Company manufactures the alleged infringing shaving device, called “Dual-Head Motoshaver,” for the defendant Motoshaver, Inc., in the Northern Judicial District of California.

The defendants are charged jointly in the verified bill of complaint with manufacturing, offering for sale, and selling, within both the Northern and Southern Judicial Districts of California, a shaving implement embodying the inventions of the patents in suit and known as “Motoshaver” and “Dual-Head Motoshaver.” It is further averred that such joint infringing conduct and activities have taken place after knowledge of complainants’ patent rights.

The matter immediately before the court is an application by complainants for a preliminary injunction to restrain defendants fom manufacturing, offering for sale or selling types of “Dual-Head Motoshaver” pendente lite.

The proceeding is based upon the allegations of the verified bill of complaint and supporting affidavits filed simultaneously with the primary pleading upon which an order to show cause was issued. Responsive thereto defendants appeared, Dalmo Manufacturing Company specially to object to this court’s jurisdiction over it and further to quash the Marshal’s service of process upon it at San Francisco, California.

At the hearing of the order to show cause, the defendants filed affidavits on the special plea of jurisdiction and also controverting averments of the bill of complaint and the supporting affidavits, and also raised new matter, to which complainants upon motion were given permission to file and did file rebuttal affidavits. The motions are submitted on the record thus made and after arguments and memoranda of authorities of solicitors for the respective suitors.

There is and can be no question raised as to the complainants’ title to letters patent No. 1,721,530, or as to the right of complainants to sue for the infringement thereof. The bill of complaint and the undisputed affidavits show that these patents have been litigated in contested suits brought by the aforesaid exclusive licensee and owner in the District Court for the Eastern District of New York, Schick Dry Shaver v. Dictograph Products Co., 16 F.Supp. 936, and upon appeal from a decree of such court in the Circuit Court of Appeals for the Second Circuit, Schick Dry Shaver v. Dictograph Products Co., 89 F.2d 643, and both courts have sustained the title of such complainants to this patent and have held it valid. The appellate court judges, in the decision rendered April 5, 1937, were unanimous on the issue of invention, but divided upon the scope that should be allowed to the claims of the patent, two holding the claims to have been narrowed by a British patent, No. 753, to Appleyard, issued in 1914, for improvements in shaving or hair cutting appliances, while the third Circuit Judge substantially opined that Schick was what Chief Justice Taft characterized in Eibel Co. v. Minnesota Paper Co., 261 U.S. 45, 63, 43 S.Ct. 322, 328, 67 L.Ed. 523, as a meritorious improver in the nature of a pioneer inventor whose valid patent claims are entitled to liberal and broad treatment. Schick Dry Shaver, Inc. et al., v. Dictograph Products Co., Inc. (D.C.) 16 F.Supp. 936; Id. (C.C.A.) 89 F.2d 643, 648; Id. 33 U.S.P.Q. 350. The opinions of the trial court and of the appellate court in these former adjudications disclose that the whole prior art was considered and expert witnesses were examined and their evidence weighed preliminarily to the findings by such courts of patent validity of claims 1 and 13 of patent No. 1,721,530, and the record here presents no new evidence affecting the issue of patentability and invention. Under such facts, the sole question on the petition for preliminary injunction before this court is whether the evidence as to infringement is such that it has been clearly shown that the patent rights of complainants under cither claim 1 or claim 13 of patent No. 1,721,530, issued July 23, 1929, upon an application filed March 31, 1928, have been invaded and infringed by either or both devices of defendants. Kings County Raisin & Fruit Co. et al., v. United States Consolidated Seeded Raisin Co. (C.C.A.9) 182 F. 59, 61.

In the case just cited, which is an instructive exposition of controlling principles that are strikingly applicable to the problems before us, Circuit Judge Gilbert stated the rule governing preliminary injunction proceedings in patent litigation in our circuit as follows: “It is held that, to entitle the complainant to a preliminary injunction in a suit for the infringement of a patent prior to a trial on the merits, he must show three things: First, a clear title to the patent; second, its presumptive validity; and, third, threatened infringement by the defendant.”

The first and second requirements have been met by the complainants, as found in the authoritative judicial pronouncements already mentioned, and moreover there has been undisputed evidence submitted in this proceeding that conclusively establishes (1) clear title to the patent to vest in complainants, and (2) validity of claims 1 and 13 of Schick patent, No. 1,721,530.

The main question for decision is therefore whether or not the thirc^ requirement, viz., infringement by defendants of either or both of such claims of such patent, has been so clearly shown as to entitle the complainants to an injunction pendente lite.

Preliminarily to a consideration of this question, there are some further uncontroverted facts that have been established that should be mentioned, as they throw considerable light upon the equities that are present in the situation before the court at this time.

Until Schick’s invention in 1929 there had never been commercially produced or marketed a practical and workable dry shaver. The popularity and success of this new and useful instrumentality of comfort and personal convenience is reflected in the growth of commercial production and sales from 3,200 Schick shavers in 1931-1932 to more than 722,000 Schick shavers in the calendar year 1936, the total number of shavers sold by the Schick Company since 1931 to the time of the filing of this suit in ■ October, 1937, being approximately 1,500,000. Since the introduction of the dry shaver of complainants on the Pacific Coast sales have increased yearly from a low of 5,610 in the calendar year 1933 to a yearly high of over 142,000 in 1936. The retail sales in this area have aggregated approximately $4,000,000, and have been sold by about 7,500 retail dealers. This business has been built up at a cost of approximately $400,000 for advertising, education, and sales promotion in the Pacific Coast area.

The greatest and most profitable market for the devices that embody the inventions described in the patent is in the last three months of the year, on account of the adaptability of the “Shaver” as a holiday gift. It has been the experience that since 1931 more than 50 per cent, of the sales of complainants’ product are made in October, November, and December. In order to maintain its manufacturing and sales force of about 1,450 persons, it will be necessary to supply a normal consumptive market for complainants’ product, and a vigorous advertising and selling campaign launched in September of this year by defendants threatens to affect seriously the sale of complainants’ product and the patent rights of complainants, the defendants offering their shaving devices at the retail price of $12.50 as against $15 for complainants’ commercial embodiment of the patented shaver. In addition to this reduction in price, defendants are offering to their sales force and to dealers certain pecuniary advantages as inducements to holiday sales of their shaver in competition with the patented shaver of complainants.

The defendant Motoshaver, Inc., shows that it commenced the manufacture and 'sale of its dry shaving devices in September, 1936, and has made different types of shavers since, having supplanted the one first produced by a new and different construction in September, 1937, the earlier model having a trade name “Motoshaver” and the later being labeled “Dual-Head Motoshaver.” Since September, 1936, more than 30,000 devices under the trade-name “Motoshaver” have been sold, and a wide distribution has been effected throughout the United States in its business which is valued in excess of $150,000. It is further averred that -despite its wide distribution and extensive advertising and selling campaign since September/ 1936, complainants did not until September 29, 1937, notify defendant Motoshaver, Inc., that it was claimed that defendant’s activities were in conflict with complainants’ patent rights. This was approximately six months from the time of the decision of the Second Circuit Court of Appeals sustaining the validity of the patent.

It is further stated by defendant Motoshaver, Inc., that there are upon the market at least seven other electrically operated dry shavers which claim to be without the claims of complainants’ patents. It is not contended, however, that any of these or defendants’ devices had been manufactured or placed upon the market uptil after complainants had built up a successful business throughout the United States with Schick’s patented shaver.

Undoubtedly the respective equities should be considered in this injunction proceeding, and they have been weighed in reaching a decision. Nevertheless, it is considered that if all of the requirements stated in the Kings County Raisin Company Case, supra, have been clearly established the complainants should not be required to await relief until a final hearing of the suit can take place and thereby be deprived of substantial benefits which market conditions may secure to them under their patent rights. Such a course of procedure would prevent the complainants from obtaining the speedy, adequate, and .complete remedy which equity is designed to administer in patent infringement suits. The compulsory cessation of infringing activities is always inconvenient and financially injurious to the infringer, but such consequences should not dissuade a court of equity from administering timely relief in clear cases.

The question of infringement here is entirely dependent upon the proper scope that is to be given to the two claims of the first patent to Schick. The majority opinion of the Second Circuit Court of Appeals, to employ the language of the dissenting judge, “concedes that Schick’s patent is valid and that his invention was á great improvement over Appleyard,” and the controlling opinion itself contains these significant statements as to the advance made by Schick in the ant involved: “When Mr. Schick made his invention in 1929, there seems to have been no dry shaver which was a commercial success. * * * Soon after it appeared on the market, Schick’s shaving implement came to be commonly known as an electric dry shaver, and, both because of its inherent worth and intelligent sales methods, went into widespread use, despite sales resistance due to a comparatively high price, its radical departure from the common razor method of shaving, and the severe economic depression which soon followed its appearance.”

There had been, prior to Schick’s invention, considerable work done in attempts to solve the problem of producing a dry shaver that would operate successfully. This desideratum remained unsatisfied until Schick conceived and produced his shaver and obtained a patent for it. The record before us clearly shows that after examination and consideration of the entire field, both in the United States and abroad, all earlier attempts at a solution of the problem were “laid aside” by the appellate court of the Second Circuit with the pronouncement that they presented “so little in common with Schick” as to require no further comment. The sole citation which persuaded the majority of the appellate court to deny to Schick a broad interpretation of the two claims of his patent is the British patent that has been referred to earlier in this memorandum.

With great respect for the decision of a court of superior authority, we think that the controlling opinion in the Second Circuit attributes to this foreign patent of 1914 too prominent a place in the art of producing a practical and successful dry shaving device.

The fact that for a period of fifteen years no one, with Appleyard’s patent and teaching, had been able to produce or market a commercially successful dry shaver does in my opinion, and did in the more weighty opinion of the third member of the appellate court, raise the Schick patent to the status of a very useful invention which has substantially advanced the art. If our conclusion is justified and correct, then the meritorious improver may rightfully invoke the application of the rule, “Ut res magis valeat quam pereat,” to the end that he may enjoy all the fruits of his discovery. Eibel Co. v. Minnesota Paper Co., supra.

In view of the diversity of opinion of the Circuit Court of Appeals as to whether Schick’s two claims should be broadly or narrowly construed, the commercial and practical success of Schick’s invention and the marked industrial advance that has followed the Schick patent in the production of workable dry shavers warrants the conclusion that Schick should be made secure in his patent rights. This cannot be done if the claims are narrowly construed and if infringement is to be found only in dry shaving devices which are approximate copies of the Schick device. Stebler v. Riverside Heights Orange Growers’ Ass’n (C.C.A.9) 205 F. 735.

The recent decision of the Supreme Court in Smith v. Snow, 294 U.S. 1, 14, 55 S.Ct. 279, 284, 79 L.Ed. 721, states the principle of construction which, under the record before us, we think is applicable to Schick’s claims, as follows: “it is plain from what has been said that the character of the patent and its commercial and practical success are such as to entitle the inventor to broad claims and to a liberal construction of those which he has made. Morley Machine Co. v. Lancaster, 129 U.S. 263, 273-277, 9 S.Ct. 299, 32 L.Ed. 715; Eibel Co. v. Paper Co., 261 U.S. 45, 63, 43 S.Ct. 322, 328; 67 L.Ed. 523; Winans v. Denmead, supra [15 How. 330, at page 341], 14 L.Ed. 717. In such circumstances, if the claim were fairly susceptible of two constructions, that should be adopted which will secure to the patentee his actual invention, rather than to adopt a construction fatal to the grant, Keystone Manufacturing Co. v. Adams, 151 U.S. 139, 144, 145, 14 S.Ct. 295, 38 L.Ed. 103; McClain v. Ortmayer, 141 U.S. 419, 425, 12 S.Ct. 76, 35 L.Ed. 800.”

But regardless of our own belief as to how much information or knowledge Appleyard contributed to the knovyn art when Schick made the first commercially successful dry shaver, it is clear that under the decision of the Circuit Court of Appeals the defendants’ devices are substantially dissimilar in construction, mode of operation, and results to the suggested shaving implement that is described in this British reference, and that -the “Motoshavers” are substantially identical with Schick’s patent as it is interpreted by the controlling opinion of the Second Circuit Court of Appeals. The Appleyard type of shaver is provided with tapered cutting teeth, thick at the base and narrowing down gradually to knife edge points whose ends are exposed, to which exposed points the hairs to be cut enter by reason of an opening immediately in front of such points; the hairs approach and encounter the points similarly as in the Gillette safety razor, a separate guard being positioned over the pointed tapered teeth to protect the skin from laceration or injury.

This described shearing head cuts the hairs only on the single lines formed by the exposed points of the two rows of tapered teeth.

The shearing means of the “Packard Lektro Shaver,” which was the device that was considered by the two federal courts in the cited Second Circuit case, was decisively found to have, “instead of a shear plate of extreme thinness throughout with narrow slots extending from side to side, the Packard shaver has as its shear plate one side of a cylinder having one comparatively large slot running nearly from end to end, making an opening along most of the central portion of that part of the shear plate which comes in contact with the surface to be shaved. The walls of the cylinder are made to taper down to thin edges on either side of the slot and those edges are cut into finely spaced teeth; the spaces being large enough to admit hair'but small enough to exclude the skin. Within this cylinder is another of like shape slotted and toothed.”

There is substantial identity of cutting means between those stated in the Apple-yard patent and those found in the Packard device that was considered in the federal court in New York, while no identity appears between Appleyard and the defendants’ shearing head, of which more will be said later in this memorandum. The construction principles, mode of operation, and results attained with defendants’ shavers are more than clearly within the two claims of the Schick patent as such claims are construed in the Circuit Court decision.

Patent No. 1,721,530 is for a shaving machine, and the object of the invention is succinctly stated by the patentee in the specifications of the patent as follows:

“This invention relates to an improved shaving implement that has a shear plate that rests against the face and has a cutter operating under the plate to cut the hairs. The machine can be used for shaving without the use of lather.

“The invention comprises an implement in which the shearing action takes place practically