APPEAL FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE DISTRICT OF MASSACHUSETTS.
MR. JUSTICE BLATCHFORD, delivered the opinion of the court.
On the 27th of May, 1879, the Consolidated Safety Valve Company, a Connecticut corporation, brought a suit in equity in the Circuit Court of the United States for the District of Massachusetts, against the Crosby Steam Gage and Valve Company, a Massachusetts corporation, for the infringement of letters patent No. 58,294, granted to George W. Richardson, September 25, 1866, for an improvement in steam safety-valves. The claim of that patent was as follows: "What I claim as my improvement, and desire to secure by letters patent, is -- A safety-valve with the circular or annular flange or lip c c, constructed in the manner, or substantially in the manner, shown, so as to operate as and for the purpose herein described."
On the 2d of June, 1879, the same plaintiff brought a suit in equity in the same court against the same defendant, for the infringement of letters patent No. 85,963, granted to the same George W. Richardson, January 19, 1869, for an improvement in safety-valves for steam boilers or generators. The claim of that patent was as follows: "What I claim as new, and desire to secure by letters patent, is the combination of the surface beyond the seat of the safety-valve, with the means herein described for regulating or adjusting the area of the passage for the escape of steam, substantially as and for the purpose described."
In the answers in the two suits, the defence of want of novelty was set up, and alleged anticipating patents were referred to; infringement was denied; and it was averred that the valves made and sold by the defendant were the inventions of George H. Crosby, and were described in two patents granted to him and owned by the defendant, one, No. 159,157,
dated January 26, 1875, and the other, No. 160,167, dated February 23, 1875.
The same proofs were taken in the two suits, and they were heard together in the Circuit Court; in each suit a decree was made dismissing the bill (7 Fed. Rep. 768); and from each decree the plaintiff appealed to this court. Non-infringement was found by the Circuit Court. This court (113 U.S. 157) reversed the decree in each case, and directed the Circuit Court to enter a decree in each case sustaining the validity of the patent, decreeing infringement and awarding an account of profits and damages.
On receiving the mandate of this court in the suit on the patent of 1866, the Circuit Court, on the 18th of May, 1885, entered a decree in conformity therewith and for a recovery by the plaintiff of profits and damages from February 15, 1879, and ordered a reference to a master to take an account of such profits and damages. A like decree was made on the mandate in the suit on the patent of 1869. The date of February 15, 1879, was taken because that was the time when the title to each of the patents became vested in the plaintiff.
The master took voluminous proofs, and filed his report on the 5th of August, 1889, covering both of the suits. The report of the master found that the total profits which the defendant had derived from its manufacture and sale of steam safety-valves containing the improvement described and claimed in the patent of 1866, from February 15, 1879, to September 25, 1883, the date of the expiration of the patent, amounted to $40,344.59. Both parties filed exceptions to the report; and on the 11th of October, 1890, the Circuit Court entered a decree overruling both sets of exceptions and awarding to the plaintiff a recovery for the $40,344.59, with interest thereon from August 5, 1889, the date of the filing of the master's report, and the costs of the suit. From this decree the defendant has appealed. The opinion of the Circuit Court is reported in 44 Fed. Rep. 66.
The master says, in his report in the case, in respect to the patent of 1866, which he calls No. 1184, that, for the period from February 15, 1879, to September 25, 1883, he attributes
the entire commercial value of the valves manufactured and sold by the defendant to the improvement covered by the patent of 1866. He adds: "Richardson's invention, as described and claimed in that patent, revolutionized the art of relieving steam-boilers from steam pressure rapidly approaching the dangerous point. It made effective for that purpose -- rapidly, and with comparatively small loss of steam -- apparatus described in other patents, which very nearly embodied Richardson's invention, but did not actually contain it. The Supreme Court in these cases has defined this invention, and has declared it to be a vital one -- a life-giving principle to structures very nearly approaching, but not quite containing an embodiment of, Richardson's discovery." The master also says in his report: "It was contended before me that none of the complainant's valves of commerce contained this invention of Richardson, but, upon the whole evidence, with specimens of all the different valves put on the market by the complainants before me, I find that they all contained Richardson's improvement of 1866. The Supreme Court has decided in these cases that the defendant's valves contain this invention, and it is under this decision that the accounting in No. 1184 is before me. Eliminate this invention from the defendant's valves and they would be commercially worthless. No substitute for this invention has been suggested to me, and I know of none which the defendants could have used in its place to have made their valves of commercial value. The defendants claim that some of the profits which they have made are due to the peculiar form of their valves, but the form which they used in making their valves was the form in which they clothed the Richardson invention, the life of their valves, and without that life the Crosby form is worthless."
The specifications and drawings of the two patents of Richardson are set forth at length in the report of the cases in 113 U.S. 157. The opinion of this court said (p. 178): "There is one structural difference between the two valves, which is now to be mentioned. In the Richardson valve, all the steam which escapes into the open air escapes from the huddling chamber, through a stricture which is smaller than the aperture
at the ground joint. In the defendant's valve, the valve proper has two ground joints, one at the inner periphery of the annulus and the other at its outer periphery, and only a part of the steam, namely, that which passes through one of the ground joints passes into the huddling chamber and then through the stricture, the other part of the steam passing directly from the boiler into the air, through the other ground joint. But all of that part of the steam which passes into the huddling chamber and under the extended surface, passes through the constriction at the extremity of such chamber, in both valves, the difference being one only of degree, but with the same mode of operation."
In respect to this point, one of the briefs for the appellant, now submitted, says: "The appellant's valve, in this case, known as the Crosby valve and made in accordance with the Crosby patents, is so constructed that it has two ground joints. When the valve rises, by reason of increased pressure, part of the steam escapes through one ground joint directly into the open air, and part of the steam escapes through the other ground joint into a huddling chamber, and thence into the air through orifices which form an aperture less than the ground joint orifice through which it enters said huddling chamber. Although the relief to the boiler caused by the blowing off of the valve was, in consequence of this double mode of escape for the steam, due to the combined effect of its escape through the huddling chamber and its escape through the second ground joint, yet, as all that part of the steam which entered the huddling chamber passed through the structured opening, the court held that the valve contained the Richardson device, and was, therefore, an infringement."
The master further says, in his report: "The defendants claimed before me that the complainants, in the accounting in 1184, which relates only to the Richardson patent of 1866, should prove specifically the value of the invention secured to them under that patent as used by the defendants, and that, as it was claimed by complainants (and the Supreme Court has so decided) that ...