Federal Court of Justice: quick release skewer – Campagnolo’s legacy
The Federal Court of Justice had to decide whether the patent in suit was novel and inventive compared to quick release skewer known from the prior art due to the special design of a part (the lever) (Federal Court of Justice, judgement of 15.06.2021 (Ref. X ZR 61/19) – Laufradschnellspanner).
1. The patent in suit
The patent in suit relates to a quick release skewer for bicycles. This quick release skewer is characterized in that the lever is arranged to be movable in the axial direction. As a result, the lever is movable against the pretension of a pretension spring from an engaged position to a rotated position. In the engaged position, the rotary lever transmits a clamping force. In the rotational position, on the other hand, the angular setting of the lever can be adjusted independently of the tension state of the quick release skewer.
The patent in suit is thus distinct from the cited prior art. Known were quick release systems in which the clamping force was applied by turning over an eccentric. However, the disadvantage of this system was that the clamping length first had to be adjusted with the clamping nut. Since the clamping force could only be checked by turning over the eccentric, it normally took several attempts until the user had found and set the suitable clamping length (cf. paras.  and ). In addition, the eccentric had to be loosened in order to change the position of the lever (cf. para. ).
The patent in suit has therefore set itself the task of providing a quick release skewer for bicycles which is easier to operate (cf. para. ). The advantage of the invention is that, on the one hand, the quick release skewer can be easily operated in that the clamping force of the quick release skewer is determined by the clamping piece and thus the lever, without the need to set a pretension. Secondly, the angular position of the lever can be freely selected, independently of the tension (cf. para. ).
2. Prior art
The plaintiff countered the novelty of the patent in suit with several publications (K4, K5, K5a and K9). These have in common that they show clamping devices with a lever, but not a use for fastening a wheel to a bicycle, although the clamping devices would in principle be suitable for this. Moreover, the functional principle shown in the prior art has been known for several decades.
The documents K6 and K8 were discussed as the closest prior art for assessing the inventive step. In both cases, quick release skewers are disclosed which also do not have an eccentric but are tensioned via the lever without having to set a pretension beforehand. The K6 differs from the K8 in that the latter has a lever which is removable. This has the advantage that the wheels are better protected against theft. The K8’s lever, on the other hand, was fixed, with the disadvantage that it could have an unfavourable end position. The K6 and K8 thus do not disclose the clamping lever in question.
However, the design of the clamping lever according to the patent in suit had already been known for decades, in particular for machine tools. In combination, the known quick release skewer and the clamping levers known from other fields disclose all the features of the patent in suit.
3. Decision Federal Court of Justice
The Federal Court of Justice decided in agreement with the Federal Patent Court that the patent in suit is novel and inventive compared to the claimed combinations.
The patent in suit is novel because the claims do not directly and unambiguously disclose a use of the clamping devices for wheels of bicycles. Moreover, the patent in suit was inventive over the closest prior art (K6 and k8). Against the background that, on the one hand, the functional principle of the clamping lever in other fields and, on the other hand, the device of the quick release skewer had already been known for decades, there was a need for an additional suggestion for the skilled person to use the clamping lever in connection with quick release skewer
In its reasoning, the Federal Court of Justice further stated that there was already no reason for the skilled person to further develop the K6 in the direction of the patent in suit, because the lever was removable in the K6, so that the problems to be solved did not exist. On the basis of the K8, the skilled person also had no incentive to use the clamping lever as a solution.
The decision is convincing both in its result and in its reasoning. It is in line with the previous case law on inventive step.
The special feature in the present case was that the functional principle had been known for several decades, but had not been used in the devices, which had also been known for several decades.
The Federal Court of Justice correctly decided that the fact that the known functional principle was not transferred to the devices according to the patent in suit meant that the skilled person needed an additional suggestion from the prior art in order to use the known functional principle in the known device. The reasoning is in line with the case law of the Federal Court of Justice that it must be determined according to the individual case to what extent and with what concretion the skilled person needs suggestions in the prior art in order to further develop a known solution in a certain way (Federal Court of Justice GRUR 2014, 647, para. 25 – Farbversorgungssystem; Federal Court of Justice GRUR 2017, 498 – Gestricktes Schuhoberteil).
This does not mean, however, that due to the long standstill in the prior art the invention cannot have been obvious. Rather, the standstill in the prior art merely means that the factual proximity to the teaching according to the invention alone is not sufficient to negate the inventive step, but that the skilled person needed an additional suggestion to the teaching according to the invention. This already follows from the principle that the age of a citation is only one of several criteria (Federal Court of Justice GRUR 2017, 498, para. 29 – Gestricktes Schuhoberteil).
a) Practical advice
This decision shows once again that it is advisable for an invalidity plaintiff to provide as much information as possible on the suggestion of further development of a technology. A standstill in the prior art should regularly lead to the fact that a further inducement for the skilled person was required and the mere proximity between the closest prior art and the patent in suit should not be sufficient in such cases. In individual cases, it may also be helpful to explain a possible standstill in the prior art with other (non-technical) motivations, provided there were reasons for this.