Schick Dry Shaver v. Motoshaver, Inc.

• Decision Date: 06 December 1937
• Docket Number: No. 1274(J) M.,1274(J) M.
• Parties: SCHICK DRY SHAVER, Inc., et al. v. MOTOSHAVER, Inc., et al.
• Court: U.S. District Court — Southern District of California

21 F. Supp. 722

SCHICK DRY SHAVER, Inc., et al. v. MOTOSHAVER, Inc., et al.

No. 1274(J) M.

District Court, S. D. California, Central Division.

December 6, 1937.

William Gibbs McAdoo, of Los Angeles, Cal., Abraham Tulin, of New York City, and E. Walter Guthrie, of Los Angeles, Cal., for plaintiffs.

Oscar A. Mellin, of Oakland, Cal., and Hill, Morgan & Bledsoe, by Kenneth K. Wright, all of Los Angeles, Cal., for defendants.

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 from 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 either 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 third 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...