A Meditation on Innovation on the Occasion of the Death of S. Newman Darby, Tinkerer, Hobbyist & Inventor

If you enjoy windsurfing, you might raise one to S. Newman Darby, who essentially invented it and who passed away last month. For a long time, not very many people knew this.
He grew up around Wilkes-Barre, Pennsylvania. Though he clearly had a mechanical gift, he was content to run the sign-painting business his father had started, and to tinker on the side. He particularly enjoyed boating on the Susquehanna and on nearby lakes. But he found sailing fussy, and steering by rudder unsatisfying. How much better it would be to steer by guiding the sails themselves and leaning into the wind. It was 1964.
He started by attaching a sail directly to a board. That worked, but it was clumsy and limited. You couldn’t turn very well, and you couldn’t go into the wind. He tried again, this time attaching the sale to the board with a short length of nylon rope, effectively creating a universal joint. This worked a treat, and in a short time, he taught himself how to “sailboard.” You stood on a rectangular board, about the size of an interior door, with the kite-shaped sail behind you. You reached behind and grabbed the sale by the cross-beam (the “yard bow”), one hand on either side of the mast bow, and steered facing forward by trimming the sail and leaning. Like this:

Darby on a “sailboard” near Wilkes-Barre, around 1964. (Source: National Museum of American History)

He started a business manufacturing the “sailboards,” but it was not successful. That did not dampen his enthusiasm. He wrote an article for Popular Science, in 1965, that explained how to make one and how to sail it.52The entire magazine is available online. Darby’s article begins on page 138, but be sure to take some time to marvel at the magazine’s variety, from airplanes, to cameras, to “atomic fingerprinting.” More than anything, he wanted others to experience the joy of sailing:

Sailboarding is sailing with a difference. You get all the fun of handling a fast, responsive boat. You can have the fun of spills without the work of righting and bailing out. And you can learn to master a type of maneuvering that’s been dead since the age of picturesque square riggers.

The article provided a detailed schematics of the sailboard.

Darby’s schematic for the “sailboard” as published in Popular Science in 1965.

It did not show the nylon-rope universal joint. Instead, beginners were advised to step the mast in a hole, which allowed some play, and allowed the sailor to toss the mast into the water in an emergency. A “more complex swivel step for advanced riders not shown” probably referred to the nylon-rope universal joint.

Re-invention of the Cool

A few years later, the “sailboard” was essentially re-invented by sailor Jim Drake and surfer Hoyle Schweitzer. Since 1964, Drake had been kicking the idea around for a kind of personal sailing vessel, based on a surfboard, when he met Schweitzer. Schweitzer was excited by the idea and encouraged Drake to keep at it. By 1967, Drake had hit upon the idea of stepping the mast with a universal joint and a triangular racing sail. This looked a lot like the windsurfing boards you see today, with the rider facing the sail but from the side and standing parallel to the length of the board (rather than facing forward with the sail behind and standing perpendicular to the length of the board). Drake was familiar with other (failed) sailboard designs, but not with Darby’s (semi-successful) one. Drake and Schweitzer applied for and obtained a patent for this “wind-propelled apparatus” in 1968 (issued in 1970).

Diagram of the windsurfer in the Drake-Schweitzer patent.

After Schweitzer bought out Drake’s share of the patent, he formed a company, Windsurfing International, to mass produce the vessels. It was quite successful, especially in Europe. But Europe is also where his trouble started. In the late 1970’s, Windsurfing International had decided to license the patent to manufacturers in Europe.53Probably because, in those days, exporting goods was, expensive, complicated and too much trouble for a small business like Schweitzer’s. It was easier to license the patent to a manufacturer already in Europe. Bear that in mind next time you think about trade policy. These licenses could be sublicensed to others. Windsurfing International earned large portion of its revenue from royalties, and as a result, it had to aggressively enforce its patent. What it didn’t know was that Drake and Schweitzer weren’t the first inventors of the sailboard as described in the patent. Darby and an English boy named Peter Chilvers54Who appears to have attached a sail to a board with a universal joint even before Darby had. had. What is more, Darby had described his invention in a publication, and Chilvers had been filmed by a local newspaper on his board.
Finally, one of the sub-licensees had decided to challenge the patent, and in 1985, a British court found the Drake-Schweitzer patent invalid as “obvious” over Chilvers’ and Darby’s sailboards.55This wasn’t Windsurfing International’s only significant legal defeat around this time. It also sought to enforce putative trademark rights in WINDSURFER, but those rights were undercut by Schweitzer’s own tendency to call anyone who used a sailboard a “windsurfer” and to refer to the activity as “windsurfer.” Even though more generic terms existed, such as “sailboard,” courts found that WINDSURFER was merely descriptive of the product being sold. In the U.S., Windsurfing International had managed to register WINDSURFER, but it eventually permitted those registrations to lapse, I’m guessing because they weren’t very valuable if the trademark couldn’t be used globally. I’m not sure what happened to Windsurfing International after that.56The company dissolved in the 1990’s, but that doesn’t mean it doesn’t exist in some other profitable form. The patent wasn’t going to last much longer in any event.

The Inventor Who Wasn’t, then Was.

For his part, Darby wasn’t interested in financial reward. All he wanted was credit and some recognition. Windsurfing International’s patent suits brought him some recognition. But in 1996, American Magazine published an article about the sport’s origin that overlooked Darby. A reader brought Darby to the editors’ attention, and the magazine rectified its oversight with a lengthy article about Darby. The Smithsonian Institute then conducted its own investigation and asked Darby if it could collect, archive and display his own documents, photographs and films about his efforts to design the sailboard. About Darby and his wife, Smithsonian archivist in charge said, “Money wasn’t their motivation. They saw something that was fun, and they wanted to make it available to everyone.”
In the U.S. (at least), windsurfing, as we now know it, was “invented” by Darby, in important sense that he was the first to conceive of the sailboard with a universal joint and reduce it to practice.57In Darby’s case, he produced a prototype, which is the natural result of the way came up with the invention by tinkering. But that’s not the only way to reduce an invention to practice. You can also describe the invention with enough detail that someone in the appropriate field (“one of ordinary skill in the art”) could produce a prototype. The famous example of this? The telephone. Alexander Graham Bell applied for—and obtained—a patent on the telephone before he had completed his prototype (because he had heard a rumor that a rival was closer than him to a prototype). But he didn’t patent his invention. If his work had been confined to a garage and a few forays onto the lake, Darby’s work would have had no legal effect. But it wasn’t a secret. Legally speaking, Darby did two very significant things with his invention:
* He described it in a publication in enough detail for anyone handy with tools to make his own sailboard. Although he didn’t describe the crucial universal joint, he did strongly suggest the universal joint when he advised more advanced sailors to employe a “swivel step.”
* He offered to sell, and did sell, several of the sailboards, although his business ultimately wasn’t successful.
Once an invention is described in sufficient detail in a publication, it is placed in the public domain. No one can patent it. Believe it or not, it used to be common for research firms to maintain their own publications in which they would describe inventions they didn’t want to patent but didn’t want their competitors to be able to patent, either.58As an added bonus, competitors couldn’t gain trade secret rights over the invention, either, because the invention wasn’t, you know, secret any longer. The most famous of these was the IBM Technical Disclosure Bulletin, which was issued from 1958 to 1998. The publication didn’t have a very large circulation, but it was cited against patent applications about 48,000 times.
In addition, once an invention has been offered for sale, or actually sold, a patent application must follow within a year. This is known as the “one-year bar,” and it’s one of the most dreaded deadlines in law (because it can’t be extended under any circumstances and missing it causes a forfeiture of rights).

Valid but Flawed

So how did Drake and Schweitzer manage to obtain a patent on the sailboard—and not just obtain one, but make a good bit of money from it? That’s because neither Drake, nor Schweitzer, nor the patent examiner knew about Darby’s sailboard sales or his Popular Science publication. Patents are to be granted only to inventions that are “novel,” i.e., no one had ever thought of it before. But patent examiners do not have unlimited resources and time to search every publication in the world, to say nothing of conducting an investigation good enough to discover Darby’s small number of sales in Wilkes-Barre. They can search patents (both U.S. and foreign) fairly easily, because patents are organized and indexed according to common categories of technologies. In addition, certain publications are also easily searched.59As you might expect, the IBM Technical Disclosure Bulletin was designed to be easy to search. It was in IBM’s interest for examiners to locate relevant technologies. Even if the examiner had every old copy of Popular Science at hand, finding Darby’s article was still unlikely.60One might wonder, given the USPTO’s mandate to approve only novel inventions, why it didn’t create its own constantly-updated index of scientific, engineering and technology publications.
For their part, if Drake or Schweitzer had known about Darby’s sailboard, they would have been compelled to disclose it in their application. Their ignorance of Darby’s work was a double-edged sword. On the one hand, it permitted them to obtain a patent, albeit a flawed one. On the other hand, had they known about it, their patent lawyers could have crafted the patent “around” Darby’s invention. The Drake-Schweitzer patent was mostly about the universal joint, but there are a number of valuable differences between—i.e., effectively improvements on—the Drake-Schweitzer model and the Darby one, that the patent attorneys could have emphasized. The Drake-Schweitzer patent would have been an improvement on the existing art, rather than a brand new type of apparatus. Contrary to popular belief, “improvement patents” are just as enforceable, and can be just as valuable, as groundbreaking patents. And in this case, Drake and Schweitzer would still have had the only patent on the sailboard, since Darby never patented his model.61A problem with improvement patents is the inventor often cannot practice his or her own invention, because that invention encompasses and thus infringes on the improved-upon invention. This is known as a “blocking patent.”
Until it was invalidated by a court, the Drake-Schweitzer patent was as enforceable as any other patent. It wasn’t invalid, just potentially invalid. Thinking of a patent this way might be uncomfortable, though, because it implies that all patents are potentially invalid. After all the hard work and money expended in applying for the patent, and even after the patent has been issued, with the stamp of approval of the U.S. government, it might still fall apart when it is enforced. For this reason, invalidating an issued patent is deliberately made difficult. The burden proving a patent is invalid is set higher than that required to prove the infringement of the patent.
It is equally uncomfortable to think that many patents today are just as flawed as the Drake-Schweitzer patent. The search for prior art is imperfect. So it follows that many patents are imperfect. But once issued, the only way (until recently) to invalidate the patent is to hope that a defendant with the motivation and the resources to perform a prior-art search beyond what the examiner performed62Or argue that the examiner analysis was wrong, and meet the heightened standard of proof, all the while fighting off a suit that is one of the most expensive to fight. The Drake-Schweitzer patent was not attacked until one of the sub-licensees was acquired63Or possibly just bankrolled by a company that was looking to acquire it. It’s hard to tell. by a much larger company that rationally believed the reduction in royalties was worth the legal fight.
Recently, however, Congress has established a procedure to have the U.S. Patent and Trademark Office re-examine issued patents, in light of patents or publications that might have been overlooked.64It is not a requirement that the patent or publication be overlooked. This procedure would not have worked for Darby’s prior sailboard sales, but it would have been perfect for his Popular Science article. This procedure isn’t cheap, but it’s much cheaper and better than being sued and trying to invalidate the patent while under heavy fire. The idea is to help clear out bad patents, but at the cost of making all patents, which remember are expensive and time-consuming to obtain, a little less stable.65Which might be one reason not everyone is happy with this procedure.

What a Patent Does and Doesn’t Do

What if Darby had obtained a patent on the sailboard with universal joint? The patent, by itself, would not have made his business any more successful. Patents don’t make you any better at business. All they do is give you the right to stop others from practicing the patented invention.66They don’t even give you the right to practice your own invention, if your invention would infringe another patent when practiced. But Darby’s business failed not because of copycat inventors but because he just didn’t seem to get people interested in his product. Maybe he just needed some investment, and maybe he lacked the right connections for that.67Most of us do, but nowadays there are resources for small businesses to become connected with investors. This doesn’t seem to help as much as one would like, however. For reasons that are not fully understood, things have been getting harder, not easier, for start-ups. Organizations like the Nashville Entrepreneur Center seem to be fighting against a rising tide. I’d say it’s crucial that we figure out what is causing this rising tide that is swamping our startups. Maybe he just needed better marketing. Maybe there was something just missing from his product beyond its technological achievements.
What Darby could have done—and, by all accounts, would not have done—was prevent Drake and Schweitzer from making and selling their windsurfer. Assuming Darby had the resources to maintain such an expensive lawsuit (and back up the threat of one), of course. Had Darby been egotistical or bloody-minded (and he wasn’t either of these things), he could have stunted the growth of the sport for years, until the patent expired. It takes not only tinkerers and visionaries like Darby and Drake, but also evangelists and business-people like Schweitzer.
In a perfect world, Schweitzer and Darby would have come to an amicable arrangement, involving royalty payments or perhaps the outright sale of the patent. That’s how value is supposed to flow to small inventors like Darby. It is also a bit like using a lumberjack’s axe to chop scallions: the power to exclude must be used very, very delicately. It’s not always a perfect world.
At the same time, Schweitzer’s business could not have succeeded without the Drake-Schweitzer patent. Schweitzer appears to have exercised his patent with intelligence, keeping some competitors at bay while licensing to others. The exclusivity that he wielded did not prevent the sport from taking off—quite to the contrary.

A “Happy Ending”

But, you know what, in the end, it kind of worked out for everyone. Darby got the recognition he deserved, and Schweitzer made a successful business and created a brand new sport. Even Drake, who, like Darby, was mostly interested in the challenge, fun and recognition, decided the story had a “happy ending.”68Drake passed away in 2012. He was, in addition to being a kind of co-inventor of the windsurfer—his model has many improvements and advantages over the Darby model—a successful aerospace engineer.
Thanks for reading!

Rick Sanders

Rick is an intellectual-property litigator. He handles lawsuits, arbitrations, emergency injunctions and temporary restraining orders, opposition and cancellation proceedings, uniform dispute resolution proceedings (UDRPs), pre-litigation counseling, litigation avoidance, and other disputes, relating to copyrights, trademarks, trade secrets, domain names, technology and intellectual-property licenses, and various privacy rights. He has taught Copyright Law at Vanderbilt University Law School. He co-founded Aaron | Sanders with Tara Aaron-Stelluto in 2011.