Appeal from the District Court of the United States for the Southern District of New York.
Before L. HAND, AUGUSTUS N. HAND, and CHASE, Circuit Judges.
This appeal is by defendant, R. H. Macy & Co., Inc., from a decree holding certain patent claims valid and infringed. Sales of the alleged infringing devices by the defendant in the Southern District by New York was proved and is not disputed.
The plaintiff, Schick Dry Shaver, Inc., is a Delaware corporation which is the exclusive licensee of the two patents in suit. The patents are owned by the other plaintiff, Schick Industries, Ltd., a corporation organized under the laws of the Bahama Islands, B.W.I. They are No. 1,721,530 which was granted to Jacob Schick for a Shaving Implement on July 23, 1929 on his application filed March 21, 1928; and No. 1,759,978 granted to the same patentee for a Shaving Machine on his application filed April 23, 1928. Claims 13, 14, 15, 16, 17, 19 and 20 of No. 1,721,530 were held valid and the five claims first mentioned were held infringed by what is known as the third model of the accused shaver sold by the defendant. Claim 1 of No. 1,759,978 was held valid and infringed by the same device.
Patent No. 1,721,530, which is the principal patent in suit in the sense that the other patent relates to improvments, disclosed the distinctive cutting head of what has become known as the Schick dry shaver. It embodies what should be given the credit for having produced the change in dry shaver cutting head construction which brought about the change in the reciprocating cutter bar type of dry shaver necessary to spread the closest cutting, which had before been confined to the edges of the shaving head, throughout the area of the shear plate.
Schick's outstanding advance in this art may be traced to the disclosure of an end shear plate of uniform thickness; having parallel slots extending from side to side; against the entire underside of which a cutter bar having similar slots was made to move rapidly back and forth to cut the hairs which came between the cutting edges and to the plane of which, but no further, the hair bearing skin was pressed into the slots. In doing this, Schick supposed he needed to use a shear-plate so thin that it would flex in operation and that support against undue flexing must be provided. He utilized the cutter bar to give such support and made much of that feature in his specifications and claims. That is not, however, of much importance on this appeal. The real contribution of Schick to this art was to give his shaving head the ability to shave with equal closeness throughout the entire cutting area. That must constantly be kept in mind both to give to his invention the patentable breadth it deserves and prevent an unwarranted extension of it.
It should now help to explain that Schick was by no means the first to disclose an electrically operated dry shaver and that what he did was to take advantage, as had not been done before, of a few simple facts. If a metal plate fitted with parallel slots of uniform width throughout is pressed against the skin of the face, the skin will puff out into the slots more or less, within limits, dependent upon the pressure and, disregarding any variation in the texture of the skin, will enter each slot to the same extent. The extent of such slot entrance of the skin, equally within limits, is also dependent upon the width of the slot openings. Consequently, if slot openings are made which will upon pressure permit some skin to puff out into them, uniform slot openings will under the same pressure each receive skin to the same extent. If, therefore, it is desired to have the skin enter the slots to the level of the backside of the shear-plate in which they are but, simply cut them through a plate, making them all alike, of metal of such uniform thickness that the vertical sides of the slots will let the skin fill in as desired while the slots are made too narrow to permit it to go farther. Additional thickness in the shearplate requires additional width in the slots or a beveling of the slot sides to accomplish the same result. Schick did not state the substance of the above in his specifications. What he did disclose was the construction of a shaving head which worked well because what has just been said is so.
Before Schick there had been no commercially successful dry shaver. But such instruments had been made and patented.They may roughly be divided into those having revolving cutters which so differ from the Schick construction that they may, for present purposes be ignored, and those having reciprocating cutter bars of the general nature of that of Schick.These dry shavers were really modified hair clippers.
They are exemplified in this record by a British patent No. 753 granted to Appeyard in 1914 and a French patent No. 613,873 granted to Fourniols in 1926.*fn1 Appleyard disclosed a dry shaver having two outwardly facing cutting edges somewhat like those of a Gillette safety razor. Each cutting edge was formed by a toothed face-plate which would be pressed against the user's face; a toothed reciprocating cutter bar placed underneath the face-plate and tightly held to its undersurface while it was actuated back and forth rapidly by an electric motor so as to cut off the hairs which entered between the teeth of the face-plate and the cutter; and a guard or comb held a short distance away from the open ends of the cutter bar and face-plate teeth to serve the double purpose of holding the skin out of damaging contact with those ends and of directing the hairs into the spaces between the teeth of the cutting edges. The need for the skin protecting guard was due to the fact that Appleyard made his face-plate taper from a relatively considerable thickness at what may be called the back down to an extremely thin knife edge at the tooth ends. The reciprocating cutter bar underneath was given a somewhat similar taper which made Appeyard's cutting edges obviously dangerous in use if unguarded. Some difference of opinion was developed at the trial as to whether or not Appeleyard's construction called for outer ends of only the theoretical thickness of zero but we find it unnecessary to say more about that. What is of more importance now is the fact that whenever hair was cut with an Appleyard shaver, if any was cut at all, it was inevitable that the closest cutting would be at the tips of the face-plate tooth ends where they were the thinnest.Hair might conceivably enter at other places and if long enough to extend beyond the inner edge of the face-plate would be cut off but unless the distance between the teeth was so great that despite the thickness of the face-plate the skin would puff in between the teeth far enough to bring its surface flush with the plane of the cutter blade there would be left, after the cut, hair so long that it would again be cut if it came within the cutting range of the edges. Nor is that the only, or perhaps the most important, difference between Appleyard and Schick. If such a situation as that above outlined occurred, the Appleyard shaver so constructed with such wide spaces between the teeth would permit the skin at and near the tooth ends to enter the slots so far beyond the width of the thinner part of the teeth there that it would be harmed by being cut or burned. None of the claims in suit were anticipated by Appleyard because, when read in the light of the specifications, they all cover Schick's cutter head with the thin shear-plate of uniform thickness throughout which Appleyard did not disclose.
Neither are two of Schick's claims in suit anticipated by Fourniols for a different, though kindred, reason. This patent has been criticized because the disclosure is so vague but it is definite enough for present purposes. At most, Fourniols disclosed an electrically operated combination hair clipper and dry shaver. He provided detachable cutting elements and intended to have the desired use determine their selection. His dry shaver, in which we are now alone interested, had its face-plate uniformly thin but there is no adequate proof that the teeth in it were separated by spaces of uniform width as in Appleyard. On the contrary, they are shown not with parallel sides but with slanting ones somewhat like those of saw teeth which gave the openings between the teeth in the face-plate a triangular shape with the base or widest part between the outer ends of the teeth. That left the skin free to enter at or near the outer ends of the teeth farther than it could under the same pressure at or toward the inner ends. There could not, therefore, be present in Fourniols the safe end or area shaving provided by the Schick shaving head and so there was no anticipation by either Appleyard or Fourniols in so far as the Schick claims are expressly or by implication limited to a uniformly thin shear-plate to distinguish from Appleyard or uniformly wide slots piercing the plate to distinguish from Fourniols. From so much it becomes clear that the kind of slots Schick used in the cutting head have to have parallel sides to escape anticipation by Fourniols.
Probably Schick did not realize the importance of this when he filed his specifications. He seems to have been greatly, too greatly perhps, concerned with his method of preventing the flexing of his very thin shear-plate. However that may be, he certainly did not disclose slots with parallel sides as the only form of shear-plate openings. On the contrary, he said in his specifications, after stating that he had shown his shear-plate as a series of parallel blades, that it "can be provided with openings of other shapes as will be evident but this form is thought to be the easiest and cheapest to make".
Claims in suit, therefore, which are not themselves limited to parallel slots in the shear-plate cannot be so limited by reference to the specifications and are invalid.To that extent they are anticipated by Fourniols. The claim now relied on which are invalid for the above reasons are Nos. 13, 14, 15, 19 and 20. Of these claims, all but No. 13 were added during the Patent Office proceedings after the application had been filed and those to take into account Schick's substantial inventive changes in the shearing head which made possible the area, as distinguished from line, shaving. But even so, there are two reasons why they must with No. 13 be held anticipated by Fourniols. One, of course, is the fact above noted that the specifications were in terms broadened to include shear-plate blades which did not have parallel edges and so might be of varying distances apart; and the other is that claims 16 and 17 in suit are both limited to shear-plate blades having parallel edges and such a limitation in each of these claims is to be contrasted with the lack of it in the others.
Claim 17 reads: "17. A shaving implement comprising, in combination, a shear-plate having a series of parallel spaced blades separated by slots open-ended on at least one side of the shear-plate, said slots being of such a width as to accommodate hair and to maintain the surface of the skin being shaved from extending above the rear surfaces of said blades while permitting it to extend substantially to said rear surfaces along the lengths of said slots as the outer surface of the shear-plate is held flat against the skin, cutter ...