Appeal from the District Court of the United States for the Eastern District of New York.
Before MANTON, AUGUSTUS N. HAND, and CHASE, Circuit Judges.
The plaintiffs are the exclusive licensee and the owner of the patents in suit who stand as one in respect to the issues and will be so treated herein.
The patents sued on are Nos. 1,721,530 and 1,757,978 issued on July 23, 1929, and May 13, 1930, respectively, on applications filed by Jacob Schick on March 21, 1928, and April 23, 1928. The first mentioned is for a shaving implement and the second, which is an improvement patent, is for a shaving machine. Claims 1 and 13 of No. 1,721,530 and claim 5 of No. 1,757,978 are relied on. As there is no dispute which turns on dates particularly, since the prior art proved is all admittedly old with respect to both patents, they may for convenience be discussed as one; the designation of the claims by number being sufficient to preserve all necessary distinction between the two patents. The second relates merely to the shape of the cutter bar to be used in the shaving implement of the first patent.
When Mr. Schick made his invention in 1929, there seems to have been no dry shaver which was a commercial success. Some had been patented in this country which attempted to make use of revolving power driven cutters within cylinders provided with slots through which the hair to be cut came into contact with revolving blades either spiral or straight in form. Examples are found in the patent of March 19, 1907, No. 847,609 issued to Roux, and Brunnaci's patent No. 911,472 of February 2, 1909. But these and some others which need not be otherwise mentioned have so little in common with Schrick that they may be laid aside without further comment. Not so, however, with a British patent No. 753 issued to Appleyard in 1914, of which more will be said later, as it served to circumscribe the field of invention open to Schick.
Mr. Schick well stated the object of his invention at the beginning of his specifications 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 takes place practically on the surface of the skin as the shearing plate or its equivalent is extremely thin. The thin plate is held in place against flexing and collapsing under inward pressure by the cutter which is disposed inside the shearing plate to co-operate with it in shearing and to support it against flexing." And he further said that: "The device is constructed to present a shear plate for movement along the skin, which plate has slots with both ends open. This form therefore provides a plate with no defined front or back but which can be moved back and forth across the skin and can therefore rest close to the skin and the hairs that are still uncut and in the slots do not raise the device out of close contact with the skin. This allows a very close shave to be accomplished. The inside cutter that operates across these slots and transverse relative to the direction of movement of the machine cuts across the edges of the slots to sever the hair, the slots being close together to form a series of narrow teeth which are prevented from moving inwardly by the support given by the inside cutter, which cutter has its teeth arranged on the end as differentiated from prior cutting devices in which the moveable cutters have the teeth operating alongside the shear plate." So it will be noticed that Schick in his specifications emphasized a very thin shear plate having slots extending from side to side, making each side so alike that the plate had "no defined front or back," which plate served throughout its width as one side of the shearing means in co-operation with a cutter bar inside that not only completed the cutting means but also supported the thin shear plate to prevent flexing. And he pointed out expressly that this construction differed from the prior art in that the cutter "has its teeth arranged on the end" instead of "operating alongside the shear plate." It would, as will be seen, have been a bit more accurate to have said that Schick's cutting means would operate not only throughout the length of the slots on the end but also at the two edges of the shear plate or, as Schick said, "along-side the shear plate," but that is relatively unimportant.
The movement of the cutter bar inside is very rapid. It is actuated by electricity through a suitable device carried in the handle, and the cutter bar is kept tightly against the inside of the shear plate by set screws, though in the commercial form Schick's cutter bar is so spring-held. The approved method of use is to move the shear plate back and forth across the surface to be shaved in directions parallel to the slots in what has been called a "scrubbing action." What hairs enter the slots at the ends will be at once clipped off because of the rapid reciprocating motion of the cutter bar and what enter along the slots will likewise be so cut. 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.
The only prior art which has been called to our attention that is worthy of serious consideration is the Appleyard patent previously mentioned. Therein is found described and illustrated by drawings an electric dry shaver which operated on the same shear plate and reciprocating cutter bar principle used by Schick. That is in fact an adaptation of the old principle used in hair clippers. Appleyard provided a shear plate at one end of his device which had either a smooth or grooved surface to move back and forth against the skin and on both edges of the shear plate he placed a row of teeth which tapered down to thinness at their outer ends. These teeth were so spaced that hair would enter between them but that space was too small to permit the entry of skin. The reciprocating member was roughly in the shape of an inverted square staple with the width of sides and head prolonged to the length of the shear plate. The ends of the sides which bore against the shear plate at its edges were fitted with teeth that extended outwardly to the ends of the shear-plate teeth, giving the cutting head somewhat the appearance of the wellknown Gillette safety razor. The teeth on the moveable double-edged cutter were also tapered to end in thinness. What is called a comb was also provided to extend along each cutting edge outwardly from the ends of the shear-plate teeth to provide added safety in operation and doubtless to aid in directing the hair to be cut into the spaces between the cutting teeth.
It has been argued that Appleyard completely anticipates Schick, even to the slots in the shear plate, in that Schick in that respect merely made Appleyard's grooves deep enough to go through the entire thickness of the plate but that ignores Schick's change to the combination of end with edge cutting that the slots made possible. The advantage of grooves in the Appleyard shear plate was twofold. They would serve to reduce dragging as the plate was moved over the skin and also somewhat prevent the uncut hair from holding the shaver too far away to give a close shave since some of the uncut hair at least would enter the groove spaces. It is true that Schick's slots served that purpose also, yet that but states no more than that there are interesting features common to both.
We are not now concerned with how much Schick took from Appleyard except in so far as that helps determine whether Schick disclosed and covered in the claims in the suit something patentable either by itself or in combination with what was old. The importance of Appleyard's patent in this connection lies only in the fact that it embodies for present purposes everything material that was old. Though there is, and of course could be, no question here concerning what may be called infringement by Schick in this country of Appleyard's British patent and on the contrary only the issue as to what Schick invented in view of Appleyard, what Judge Denison said about patentable difference in Herman v. Youngstown Car Mfg. Co. (C.C.A.) 191 F. 579, 585, is very apt: "Patentable difference does not of itself tend to negative infringement. It may just as well be based upon infringement, plus improvement; and improvement may lie in addition, simplification, or variance." So it is enough on validity if Schick, regardless of how much he may have taken from Appleyard, made one or more patentable improvements which he disclosed and covered in his claims in suit. We think he did just that at least in (1) providing the shear plate throughout of extreme thinness; having (2) slots extending all the way across from edge to edge; and (3) a cutter bar supporting the shear plate, throughout its entire width, against flexing. Much has been said to the effect that the so-called support against flexing would inevitably be provided by a cutter bar held closely enough to the inside of the shear plate to cut the hair successfully in cooperation with the slots in the plate and this is obviously true, provided the cutter was made, as it might be and as Schick made it, heavy enough and well enough supported so as not to flex with the shear plate. And further if it had, as Schick gave it, teeth wider than the slots so that in all stages of movement some part of some cutter tooth would support some part of each strip in the shear head between the slots. To give such a cutter both haircutting ability and shear-plate support there was needed only sufficient endwise movement of the cutter to open and close the slots to permit the introduction of hair beyond the inner surface of the shear head despite the fact that the cutter teeth were wider than the shear head slots. And that is what Schick did.The claims relied on are:
"1. A shaving implement comprising a shearing plate of extreme thinness to rest against the skin, having an opening for the reception of hair, a cutter to travel across the opening to provide a shear cut with one side of the opening, and means for holding the parts to insure the supporting of the plate against flexing by means of the cutter."
"13. A shaving implement comprising a shear-plate with slots extending from side to side, a cutter under the plate and having teeth to co-operate with the edges of the slots in cutting, and means ...