The opinion of the court was delivered by: CAMPBELL
CAMPBELL, District Judge.
This is a suit for the alleged infringement of patent No. 1,916,943 issued to Blanche E. Beadle for hair former granted July 4, 1933, on an application filed February 23, 1932.
The plaintiff has title to the patent in suit, and notice of infringement was given before the commencement of this suit.
The defendant has interposed an answer setting up the defenses of invalidity and noninfringement.
This suit is based on claims 5, 8, 9, and 14 of the patent in suit, although more claims were alleged in the bill of complaint.
The sale by the defendant of the hair formers, Exhibits 1, 2, 3, and 4, which are alleged to infringe, within the Eastern District of New York, subsequent to the issuance of the patent and within six years prior to the commencement of this suit, is admitted.
Plaintiff contends that these formers represent two styles illustrated by Figs. 1 and 2 of the patent in suit.
Defendant contends the patent in suit is invalid by reason of anticipation and noninvention over the prior art.
Defendant concedes that, if the patent in suit is valid Exhibit 1 infringes, but contends that Exhibits 2, 3, and 4, in any event, do not infringe.
The patent in suit relates to a hair dressing device described as a "hair former," and also known to the trade as a "former" or "roller."
A hair former is normally adapted to be worn publicly in the hair during the waking hours of the day, as distinguished from ordinary hair curlers and wavers which are usually worn privately at night, for the sole purpose of distorting the hair so that it will have a curl or wave after they are removed.
Three forms of the former or roller, described in the patent in suit, are illustrated in Figs. 1, 2, and 3 thereof, all possessing the same general characteristics, that is, they are necessarily formed of a pair of equal parallel side members of pliable "wire such as copper, iron or other more or less bendable material * * *" "which is relatively non-resilient, so that they may be bent into various shapes and will retain their shape." The wire is covered with "fabric, rubber or the like." The two side members are "joined together at or adjacent their ends" in such parallel relation, and form an elongated hair-receiving slot between them. The resulting effective length of the slot for hair-receiving purposes is something less than the length of the members, and the ends project at either side free of hair. By these projecting ends, which serve as handles, the side members may be grasped, shaped, and otherwise manipulated by the thumb and fingers of the user, who at all times has hold of the ends of both side members, completely controlling them and enabling her to shape or otherwise manipulate them freely without grasping them intermediate their ends for that purpose.
[See Illustration in Original]
In one form of the roller, illustrated in Fig. 1 and described in the patent at page 1, lines 42-71, the parallel side members 4 are connected together at their ends by self means, that is, the connecting means are integral links of the same pliable wire, and there are two clips 6, spaced inwardly from the ends of the members and embracing both of them, so as to positively define the hair-receiving slot 18, and leave the completely and positively closed loops 10 outside of the clips 6. In the preferred construction of the patent in suit, and in both of plaintiff's and defendant's devices, this form of the roller is made of a single piece of wire, the ends of the wire being "suitably joined together beneath one" of the clips 6.
In another form illustrated in Fig. 3, and described in the patent at page 1, lines 78-88, the parallel side members 24 are closely connected together at their ends by the clasps 25. The clips 26 are adjustable along the members to vary the length of the hair-receiving slot 28, and completely and positively close the loops 30, which are formed at the ends of the device by the connection 25, between the extremities of the side members 24. Plaintiff's early commercial device, Exhibit 13, is constructed precisely as illustrated in Fig. 3, but her present commercial embodiment of this form, Exhibit 21 (green card), and that of her licensee, Exhibit 20, employ but one clasp to connect the free ends of the single wire in an arrangement similar to that illustrated in Fig. 1.
The third form of the roller, illustrated in Fig. 2 of the patent, and described in the patent at page 1, lines 72-77, may be described as the forms of Figs. 1 or 3, with the respective clips 6 and 26 removed or omitted, so that the end loops still remain, but they are not completely or positively closed at their inner ends as by the clips 6 and 26 of Figs. 1 and 3. The reduction of the effective length of the hair-receiving slot 18 is occasioned by the close coupling together of the ends of the side members 14 by the clasps 16. The end loops are not positively or completely closed, but the close proximity of the side members restrain the hair from slipping into the physical extremities of the slot, and the side ends extend free to either side of the hair in the slot, and serve as handles for manipulating the roller in use.
Where, instead of employing clasps 16 at the end, the wire is bent double as in Fig. 1, as close a coupling is difficult of attainment, because the wire covering does not permit sharp angle binding, and therefore resort is had to pinching the two wires together at the ends of the roller, as in plaintiff's early commercial models Exhibits 11, 12, and 14, and her present model Exhibit 21. These exhibits all provide the extending ends or handles by shortening the effective length of the hair-receiving slot.
Ends or handles are provided in these exhibits by shortening the effective length of the hair-receiving slot, by the simple expedient of pinching the wires together. The end loops thus provided are not as completely and positively closed at their inner end as the loops in Figs. 1 and 3 and Exhibits 1, 16, 18, and 21 (red card), which are closed by intermediate clips.
In use the hair is inserted in the elongated slot between the parallel side members, and, because of the reduction of the effective length of the hair-receiving slot, the hair does not enter the opposite loop ends. The loop ends project free to either side of the hair and serve as flat handles, which are grasped by the thumb and fingers, and rotated to turn the roller about its longitudinal axis, so as to roll up the hair about it. Both side members, which extend to the extremities of the roller, are grasped by the user during the rolling operation, and thus the entire length of both side members are under the user's control, and may be worked or shaped at will without touching them at any other point. The forming operation being completed, the ends of the device are turned inwardly so as to press against and hold the hair and roll thus formed, and thereby lock the whole against unwinding. The roller is completely pliable, and may be bent anywhere along its length so that clips 6 will not show if the clip form is employed. It is adapted to any desired width of hair roll, and may be shaped to fit any size or shape head or neck. The infolded ends being soft and well rounded, they do not cut the hair, or press or stick uncomfortably into the neck or scalp. The device is light in weight and invisible in use, so that the hair roll formed thereby appears soft and natural, instead of stiff and artificial.
The plaintiff has been in the business of manufacturing and selling hair dressing and curling devices at Springfield, Mass., since 1915, through partnerships under various names, to whom she gave licenses under the several letters patent issued to her between 1919 and the date of the patents in suit.
The defendant is a dealer in the formers or rollers which are alleged to infringe herein, and is carrying on business in this district.
The defendant was a customer of the plaintiff before it commenced to market the devices of which complaint is made herein.
Prior to 1929-30, large numbers of women had been wearing their hair in what was called a short boyish bob, but about that time a change of style called for a longer length, and during the time the hair at the back of the head was growing in length plaintiff contends that it was difficult to turn up the hair and secure it with the devices then on the market, because the hair was too short, and that, because of the demand for an invisible, soft, light, and comfortable device which could be shaped to conform to any size head or neck, or any size roll, for the purpose of rolling the hair, and being left in as a hair dressing device, she developed the device of the patent in suit in 1930.
Plaintiff first sold the device in October, 1931. Shortly thereafter plaintiff took her various models to her patent attorney and asked him to prepare a patent application. Due to a lack of money her patent application was not filed until February 23, 1932.
Plaintiff made every effort to have the patent issued promptly, but was delayed by interference with one Jacobs, whose application was filed subsequent to hers. The interference was settled by Jacobs filing a concession of plaintiff's priority, and plaintiff granting to Jacobs' assignee, A.J. Donahue Corporation, a license, for which the licensee pays plaintiff a royalty. Plaintiff's patent rollers have been patent marked.
This suit is based on claims 5, 8, 9, and 14 of the patent in suit.
Claims 5 and 9 are directed to the fixed clip form. Claims 8 and 14 relate to the form without intermediate clips.
The claims in suit read as follows:
"Claim 5, A hair forming device comprising in combination, side members of bendable metal covered with non-metallic material held together by clasps in spaced relation to provide an elongated slot there between, and end portions in the form of closed loops located outside of said clasps to afford a stable support for grasp of the thumb and fingers whereby to ensure bending and shaping of the side members under complete control of the operator for application to the hair."
"Claim 8, A hair dressing device including a pair of hair receiving members composed of covered wire, clasps to hold said members together to create a slot there between, and loops comprising the ends of said device, said loops being formed of substantially the same material and of the same size as said members to afford a stable support for grasp of the thumb and fingers whereby to ensure bending ...