Federal Court of Justice (FCJ), decision of 02.03.2021, X ZR 17/19 – Quick-change arbor (Schnellwechseldorn)

The X. Civil Senate of the Federal Court of Justice (FCJ) stated in its “Schnellwechseldorn” decision of 02.03.2021 (docket no. X ZR 17/19) on patent claim construction that, in case of doubt, a patent claim feature shall not be interpreted in such a way that it is reflected in prior art which is described in the description as being disadvantageous and from which it seeks to distinguish itself. In this judgment, the court supplemented its comments from the decision of 27.11.2018, X ZR 16/17, GRUR 2019, 491 – Scheinwerferbelüftungssystem.

I. Course of proceedings

At first instance, the Federal Patent Court declared the patent in suit partially invalid and dismissed the remainder of the action. The FCJ amended the judgement of the Federal Patent Court and dismissed the action for nullity.

II. Facts

The patent in suit concerned, inter alia, a quick-change and plug eject arbor for a tool. Such devices are in particular used with hole saws to hold a drill and a hole saw coaxial with the drill and attached to a drilling machine. The centrally arranged drill serves to first pre-drill a centering hole so that the cup-shaped hole saw arranged coaxially to the drill can subsequently saw out the desired hole around the centering hole (Federal Patent Court, judgment of 30.10.2018, 5 Ni 9/17 (EP)). The quick-change arbor according to the patent in suit comprised a longitudinal body with a drive end and a tool end as well as means for attaching the tool. In the context of the decision of the FCJ, feature 3a in particular was relevant.

Feature 3a was part of the preamble – not of the characterizing part – and read: “[means for attaching (6) the tool (2)], which attachment means (6) are slidably releasable from the longitudinal body (3) and are provided with:”. The Federal Patent Court understood this feature (broadly) in the sense that the means for attaching the tool are detachable from the longitudinal body by means of (axial) displacement (Federal Patent Court, decision of 30.10.2018, 5 Ni 9/17 (EP), S. 16).

According to the patent description, quick-change arbors were known in the prior art. Nevertheless the known arbors were complex, elaborate and could only be produced at high cost. The patent in suit aimed to providing a simplified arbor, which could be manufactured more simply and at lower cost. In the description the patent in suit also dealt more detailed with the prior art. Among other things, it disclosed a device for attaching a hole saw and a pilot drill, which had a slidable selector sleeve. This would enable quick connect coupling and decoupling. However, this selector sleeve was fixedly attached to the tool end of the arbor. The patent in suit described this as too complex.

III. The decision of the Federal Supreme Court

In its decision, the FCJ ruled, inter alia, that the invention is considered to be new. It reasoned that the patent in suit dealt in the description with prior art from which it aimed to distinguish itself. The device disclosed in the prior art for attaching a hole saw and a pilot drill provided a slidable selector sleeve which enabled the hole saw and pilot drill to be coupled and uncoupled quickly, but was fixedly attached to the tool end of the arbor. The patent in suit had described this design as too complex and had emphasized the detachability of the attaching means as an improvement.

The FCJ concluded from this that an attaching mean was only detachable within the meaning of the patent in suit if it could be detached not only for purposes of repairing and maintenance, but also during the removal of the tool.

In its reasoning, the court continued its argumentation from the judgment of 27.11.2018, X ZR 16/17, GRUR 2019, 491 marginal no. 19 – Scheinwerferbelüftungssystem. There, the FCJ had reasoned that if a known prior art was equated with a feature of the preamble of a patent claim, the features of the characterizing part shall, in case of doubt, be interpreted in such a way that feature is not found in the prior art from which it seeks to distinguish.

In its “Schnellwechseldorn” decision, the FCJ now pointed out that this also applies if the feature to be interpreted is not part of the characterizing part, but if it is clear from the description that the patent also intends to distinguish itself from a disclosed prior art with this feature.

In its decision, the FCJ thus confirmed that prior art cited in the patent can be used for claim interpretation.

However, it is recognised that a patent claim shall not be interpreted restrictively by referring to the description below its wording (BGH, judgement of 07.09.2004, X ZR 255/01 – Bodenseitige Vereinzelungseinrichtung). Nevertheless, this does not mean that the features of the patent claim are not subject to claim construction. A patent is its own lexicon. The meaning of the wording of a patent claim can only be determined by way of interpretation. In doing so, the description and thus the prior art, from which the patent wishes to distinguish itself, has to be taken into account.

by Dr Benedikt Walesch

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