Schick Dry Shaver v. Motoshaver, Inc., 1274-M.
| Decision Date | 12 November 1938 |
| Docket Number | No. 1274-M.,1274-M. |
| Citation | 25 F. Supp. 346 |
| Court | U.S. District Court — Southern District of California |
| Parties | SCHICK DRY SHAVER, Inc., et al. v. MOTOSHAVER, Inc., et al. |
William Gibbs McAdoo and E. Walter Guthrie, both of Los Angeles, Cal. (Abraham Tulin and Reginald Hicks, both of New York City, of counsel), for plaintiffs.
Oscar A. Mellin, of Oakland, Cal., and Hill, Morgan & Bledsoe, by Kenneth K. Wright, of Los Angeles, Cal., for defendants.
Upon decision of the motion for preliminary injunction, this court followed the majority opinion of the Second Circuit Court of Appeals in Schick Dry Shaver, Inc., v. Dictograph Products, 89 F.2d 643. We conceived it to be our duty, in the then state of the record, to subordinate our own opinion as to the scope of the Schick primary patent No. 1,721,530 to the decision of the appellate court, Schick Dry Shaver, Inc. v. Motoshaver, Inc., D.C., 21 F.Supp. 722; notwithstanding the sharp division of learned views in the higher tribunal on Schick's contribution to the dry shaver art and his great improvement over the only worthwhile earlier reference, to-wit, a British patent, No. 753, to Appleyard, dated March 10, 1914.
The record made in this action at the trial on the merits is different and much more comprehensive than that before the Second Circuit Court of Appeals in the Dictograph Case. It requires us most respectfully to attribute to the three Schick inventions broad claims and a liberal construction of those which have been made in the patents. Smith v. Snow, 294 U.S. 1, 14, 55 S.Ct. 279, 79 L.Ed. 721; Eibel Process Co. v. Paper Co., 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523; Irving-Pitt Mfg. Co. v. Blackwell-Wielandy Book & Stationery Co., 8 Cir., 238 F. 177. We think the recent decision of the Supreme Court in General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 58 S.Ct. 899, 82 L. Ed. 1402, which considered the recondite granular composition of filaments for electric incandescent lamps, is not comparable to the art of electrically driven dry shaving machines. In the former the field is limited and therefore the variant from earlier inventions must be specifically defined in the claims in order to comply with statutory requirements. 35 U.S.C.A. § 33. In the latter the applicable field was practically and commercially open at the time of Schick No. 1,721,530, and there was no dry shaving implement at that time employing the Schick principle of dry shaving which successfully shaved at the surface of the skin by having the skin itself cushion or enter into the openings of a relatively thin face contacting shear plate, until it practically reaches the cutting mechanism underneath so that the surface of the skin at that point is flush with such cutting mechanism.
Schick, having been the first to conceive, reduce to practice and obtain patent for machines which efficiently shaved in such manner, is entitled to enjoy the fruits of his invention, and if, in the light of these accomplishments and the wide commercial adaptations of dry shaving appliances embodying Schick's novel principle and mode of operation that have followed notwithstanding the severe economic depression, he is to be restricted to approximate copies of his new device, his patents are substantially divested of any adequate protection. Moreover, in regard to defendants' contention as to the pertinency of the ruling in General Electric Co. v. Wabash Appliance Co., supra, it should be noted that the meager description of the filament in the claims invalidated by the Supreme Court in Pacz No. 1,410,499 is in no way comparable to the terms used in the Schick claims in suit. Especially is this true regarding the broad claims 1 and 13 of the earliest Schick patent as interpreted by the Court of Appeals in the Dictograph Case.
We are also of the opinion that the primary aspects of Schick patents Nos. 1,721,530, 1,757,978 and 1,747,031 respectively are examples of those cases in which the Supreme Court stated that reference could be made "to the descriptive part of the specification in order to give definite content to elements stated in the claim in broad or functional terms." 58 S.Ct. 903. See, also, Angelus Sanitary Can Machine Co. v. Wilson, 9 Cir., 7 F.2d 314.
The three Schick patents that are in suit, namely, No. 1,721,530 applied for March 31, 1928, and granted July 23, 1929, No. 1,757,978, for which application was filed April 23, 1928, and which was issued May 13, 1930, and No. 1,747,031, for which application was filed July 2, 1928, and which was issued February 11, 1930, are by the same person as patent applicant — J. Schick. They were co-pending, and under the factual situation that is presented by the record before us, and as determined by this court in its Findings of Fact which follow, there has been no double patenting. Traitel Marble Co. v. U. T. Hungerford Brass & Copper Co., 2 Cir., 22 F.2d 259; Gibbs v. Triumph Trap Co., 2 Cir., 26 F.2d 312; Claude Neon Lights v. E. Machlett & Son, 2 Cir., 27 F.2d 702; Southern Textile Machinery Co. v. United Hosiery Mills Corporation, 6 Cir., 33 F.2d 862; American Hatters & Furriers Co. v. Danbury & Bethel Fur Co., D.C.Conn., 47 F.2d 268.
In our decision granting preliminary injunction against the defendant Dalmo Manufacturing Company, a California corporation, as well as against its co-defendant Motoshaver, Inc., we held, under the record at that time, and in line with Zell v. Erie Bronze Co., D.C., 273 F. 833, that jurisdiction existed in this District Court over both domestic corporate defendants.
Since our decision, the Ninth Circuit Court of Appeals, in Endrezze v. Dorr Co., decided May 23, 1938, 97 F.2d 46, has held that Section 48 of the Judicial Code, 28 U. S.C.A. § 109, is solely applicable to patent infringement suits, and inasmuch as the two requirements of Section 48 are not present in this action as far as Dalmo Manufacturing Company is concerned, we are powerless to enter a decree of infringement against it. We have, however, in Findings of Fact hereinafter stated, set forth the factual situation that is shown by the record before us at this time.
We think that under the evidence defendant Dalmo Manufacturing Company is guilty of joint or contributory infringing acts with defendant Motoshaver, Inc., Trent v. Risdon Iron & Locomotive Works, 9 Cir., 102 F. 635; National Mechanical Directory Co. v. Polk, 9 Cir., 121 F. 742; Dental Co. of America v. S. S. White Dental Mfg. Co., 3 Cir., 266 F. 524, 526; but on account of insufficient proof under the Endrezze Case, supra, this District Court cannot enter a decree of injunction against Dalmo Manufacturing Company at this time.
The following Findings of Fact, Conclusions of law, and direction for the entry of judgment pursuant to Rule 52 of the Rules of Civil Procedure, 28 U.S.C.A. following section 723c, and Equity Rule 70½, 28 U.S.C.A. following section 723, are made and entered as the decision of this court on the merits.
Findings of Fact.
1. The plaintiff, Schick Industries, Limited, is a corporation organized and existing under the laws of the Bahama Islands, and is the owner of the legal title to the patents in suit, to-wit, patent No. 1,721,530, issued to Jacob Schick July 23, 1929, on an application filed March 31, 1928; patent No. 1,757,978, issued to Jacob Schick May 13, 1930, on an application filed April 23, 1928, and patent No. 1,747,031, issued to Jacob Schick February 11, 1930, on an application filed July 2, 1928; which three patents were co-pending simultaneously in the Patent Office.
2. The plaintiff, Schick Dry Shaver, Inc., is a corporation organized and existing under the laws of the state of Delaware with its principal place of business in Stamford, Connecticut, and is the owner of the exclusive right to make, use and sell, and to grant to others sub-licenses to make, use and sell, in the United States of America, the inventions of the three patents in suit.
3. The plaintiff Edises, Inc., Schick Dry Shaver Distributors, is a corporation duly organized and existing under the laws of the state of Nevada, with its principal place of business at San Francisco, California, and has the exclusive right of distribution of the Schick Dry Shaver, which embodies and is made pursuant to the inventions of the three patents in suit, by contract in writing from and with the plaintiff Schick Dry Shaver, Inc., throughout the State of California and the other Pacific and far western states of the United States.
4. The defendant Motoshaver, Inc., is a corporation organized and existing under the laws of the state of California and has a regular and established place of business in Los Angeles, California, within the Southern District of California, Central Division, where it has advertised and sold dry shaving implements variously known as "Motoshaver" and "Dual-Head Motoshaver," exemplars of which are in evidence as plaintiffs' Exhibits 18, 23 and 24, within six years prior to the filing of the bill of complaint herein.
5. The defendant Dalmo Manufacturing Company is a corporation organized and existing under the laws of the state of California and has a regular and established place of business in San Francisco, California, within the Northern District of California, where it has manufactured for and sold to the defendant Motoshaver, Inc., dry shaving implements variously known as "Motoshaver" and "Dual-Head Motoshaver," exemplars of which are in evidence as plaintiffs' Exhibits 18, 23 and 24, within six years prior to the filing of the bill of complaint herein.
6. The defendant Dalmo Manufacturing Company through transactions with defendant Motoshaver, Inc., has built up a large and lucrative business in the manufacture and sale of said "Motoshaver" and "Dual-Head Motoshaver" dry shaving machines, and since September, 1936, in excess of 30,000 of such dry shaving devices were manufactured and sold by said defendant Dalmo Manufacturing Company. The...
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