Lindsay v. Roraback, 57 N.C. 124, 4 Jones Eq. 124 (1858)

Aug. 1858 · Supreme Court of North Carolina

57 N.C. 124, 4 Jones Eq. 124

HOSEA LINDSAY & CO. against ISAAC RORABACK and another.

Where the seller of a patent right for an improved mode of making soap, by artfully keeping back the patent itself, and by the exhibition of printed forms and receipts falsely stating its 'purport, and by other arts and contrivances, induced one to purchase a much less extensive and valuable improvement than that bargained for, it was IIeld to be a case within the ordinary jurisdiction of our State courts of equity.

Where it becomes necessary for our courts of equity, in the exercise of their ordinary jurisdiction, to pass collaterally on the validity of a patent right, there is no reason why they may not do so.

Cause transmitted from the Court of Equity of Buncombe connty.

The defendant, Isaac Rorabacb, took out a patent from the patent office, securing to him “ the exclusive right and liberty of making, constructing, using, and vending to others, a certain mixture,” a description whereof is given in the schedule annexed to the letters patent, and made a part of them.

The schedule, referred to, recites that the defendant, Roraback, bad “ invented a new and improved article of compound chemical soap,” and declares that the following is “ a full and exact description of the ingredients for making the same : 5 lbs. of white opodeldoc soap of commerce; \ lb. sal soda, one tablespoon full spirits of turpentine, one tablespoon full spirits of wine, one tablespoon full of hartshorn, one and half gallon of river, or soft water.” The schedule then describes the mode of using these materials, and concludes as follows : “What I claim as my own invention, and desire to secure by letters patent, is the propounding of them in such proportions, (as described above) as to form a solid of suitable consistency, which I believe excels any other soap in its suitableness for cleaning clothes of every description, and for toilet purposes generally, as well as in point of cheapness and conveniency and despatch with which it is made.”

The plaintiifs, in their bill, allege that on the 16th day of September, 1857, the defendant Roraback, professing to act for himself and the defendant Lyons, sold the said patent right to them, in and for the State of North Carolina, excepting the 8th congressional district, and made a deed in the name of himself and the said Lyons, for the same ; that they received as consideration therefor, a house and lot in the town of Ashe-ville, which is particularly described in the hill ; that in making the said sale, the defendants fraudulently represented to the plaintiffs, that the said patent secured to them the exclusive right of making, using, and vending two kinds of soap, one of which was called “ Eoraback’s compound chemical toilet soap,” and the other, “Eorabaek’s compound chemical washing soap;” that they were ignorant of the extent of the rights conferred by the said letters patent, and relied on the representations made by the defendant Eoraback ; that to give semblance to his false representation in this respect, he furnished the plaintiffs with a printed form of directions for making these two kinds of soap, which was formally headed in large letters, “ Eoraback’s compound chemical toilet soap,” and “ Eoraback’s compound chemical washingsoap;” that the first of these recipes, pursues the schedule affixed to the letters patent, with the exception that the spirits of wine is omitted, and six pounds of the soap of commerce is stated in the recipe and five in the schedule, and gives 18 pounds as the result. The other form or recipe, requires six gallons water, three pounds opodeldoc soap of commerce, one pound of sal soda, four tablespoons full of spirits of turpentine, and four tablespoons full of spirits of hartshorn, (omitting also the spirits of wine). The result of this compound is stated in the form as “fifty-pounds of jelly soap.” On the back of the paper containing these forms, is a blank receipt for “ fifteen dollars in full for the right and liberty of making and constructing for the sole use of himself (the purchaser) and family, Eoraback’s improved, soap mixture within described. Patented March 8d, 1857.”

This paper was delivered, with the deed aforesaid, being on the same sheet with it, and at the same time the said Eoraback took from the plaintiffs a bond in $1000, conditioned not to reveal any thing contained in the letters patent. The plaintiffs allege that the letters patent themselves were kept back and concealed until this bond was executed, and as soon as they were delivered, the3r were advised by the defendant Roraback, that it was necessary, forthwith, to have them recorded, which he accordingly did. They aver that, by the means and contrivances here resorted to, and by the false representations as to the scope and meaning of the letters patent, they were deceived into making the contract. They say that the second mode is the only one of any value, and they believe would be remunerative; but that the one specified in the patent is of very little value.

The bill further alleges, that the patent itself is void, for that the process of making soap therein set forth was not new, but was known, and in common use, several years before this patent was taken out; he shows an extract from a newspaper of prior date to the letters patent, giving a formula for making soap exactly like that set out in the printed direction, No. 1, above set out. They pray that the defendants may be decreed to pay back what the plaintiffs have expended in trying to sell the patent rights, and for a reconvej'ance of the house and lot in Asheville.

To this bill the defendants pleaded to the jurisdiction of the Court, insisting that the circuit court of the United States has jurisdiction of the case, as being a matter requiring the adjudication of a right growing out a patent, and the patent laws passed by Congress.

Slwpp, Dieleson and N. 7F. Wooclfon, for plaintiffs.

Gaither and Merri/man, for defendants.

Pearson, J.

It may be, that questions involving the infringement of patent rights, and proceedings to repeal, and declare such rights void, are within the exclusive jurisdiction, of the circuit court of the United States ; at all events, there are many weighty considerations for so construing the Act of Congress. We do not, however, enter into the subject, because it is not presented by the facts of our case. The allegations of the bill do not require this Court to “adjudicate and pass upon the patent right therein mentioned.” It is alleged that the defendants committed a fraud in making sale' of a patent right to the plaintiffs, by falsely representing, that the patent embraced two inodes of making soap ; whereas, in point of fact, it was confined to one, and certain means and contrivances, by which the fraud was effected, are set out in the bill; (all of which allegations, for the purpose of passing on the plea, are to be taken as true). These allegations make a case of fraud, within the ordinary jurisdiction of a court of equity. If in order to the exercise of this well-known subject of equity jurisdiction, it should become necessary, collaterally, to pass upon the validity of the patent right, we can see no sufficient reason, wherefore, this Court may not do so. But that point, as we have said, is not involved ; for this is purely a case of fraud, in which we are not called on to adjudicate and pass upon the patent right, but are confined to the means and contrivances, by which the alleged fraud was committed. The plea must be overruled, and the defendants required to answer.

Per Curiam, Decree accordingly.