Patents - Prevayl Innovations Ltd v Whoop Inc.

Jane Lambert

 

Intellectual Property Enterprise Court (HH Judge Hacon) Prevayl Innovations Ltd v Whoop Inc [2025] EWHC 399 (IPEC) (27 Feb 2025)

This was a claim by Prevayl Innovations Ltd ("Prevayl") against Whoop Inc ("Whoop") for the infringement of UK patent GB 2 589 947 ('the patent'). and a counterclaim by Whoop for a declaration of invalidity of the patent on the grounds of anticipation and obviousness. The action and counterclaim were tried by HH Judge Hacon on 20-21 Jan 2025.  By para [95] of his judgment in Prevayl Innovations Ltd v Whoop Inc [2025] EWHC 399 (IPEC) which he delivered on 27 Feb 2025, the learned judge held the patent was invalid for lack of an inventive step.  He added that had it been valid it would have been infringed.

The Invention

The invention for which the patent was granted was a "bra garment and method,"  Judge Hacon described it as a type of bra which incorporates technology that measures biosignals produced by the wearer, sometimes called a 'smart bra.'" He explained that a biosignal could be "any signal emitted by a living being which can be measured and monitored."  Electrodes can be incorporated into the bra to measure the wearer's heart's electrical activity during exercise providing information on the wearer's health and fitness.

The patent acknowledges that garments, including bras, which incorporate sensors to measure biosignals were known.  Also known were sports bras with an underband at the base of the bra to provide the wearer with additional support while exercising and some smart bras had underbands.  The invention places the apparatus that measures the biosignals at the side of the wearer in contrast to existing smart bras that position the apparatus on the wearer's chest or between her shoulder blades which could be uncomfortable and unsightly,

The Claims

S.125 (1) of the Patents Act 1977 provides:

"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."

The first two claims of the patent were as follows:

"1. A bra for use in measuring biosignals of a wearer, the bra comprising: a front region comprising a pair of breast contacting surfaces; a rear region; a pair of side regions extending between the front region and the rear region; an underband, the underband extending below a lower edge of the front region, rear region and side regions; and a measuring apparatus comprising a sensor assembly comprising one or more sensors, wherein all of the sensor assembly is provided in one of the side regions and is not provided in the underband.

2. A bra as claimed in claim 1 further comprising a mounting arrangement, wherein the mounting arrangement comprises a pocket provided in one of the side regions where the sensor assembly is provided, optionally the pocket is a hidden pocket."

Trial

The judge considered first the validity of the patent and secondly, whether it had been infringed.

Anticipation

S.72 (1) (a) of the Patents Act 1977 enables the court or the Comptroller-General of Patents, Designs and Trade Marks to revoke a patent if the invention is not patentable. S.1 (1) (a) provides that one of the conditions for the grant of a patent is that the invention is new. According to s.2 (1) an invention shall be taken to be new if it does not form part of the state of the art. In Synthon BV v. Smithkline Beecham plc,, [2005] UKHL 59, [2006] RPC 10, [2006] 1 All ER 685, the House of Lords held that the requirements for anticipation were disclosure and enablement. In General Tire & Rubber Company v Firestone Tyre & Rubber Company Limited, [1972] RPC 457, Lord Justice Sachs said on page 485:

"If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor’s publication will inevitably result in something being made or done which, if the patentee’s patent were valid, would constitute an infringement of the patentee’s claim, this circumstance demonstrates that the patentee’s claim has in fact been anticipated."

US Patent Application 2018/0317845 (845)

Whoop argued that US Patent Application 2018/0317845 for Padded, flexible encasing for body monitoring systems in fabrics anticipated Prevayl's invention.  The application was for a wearable monitoring device having padding and protective layers which together encased and protected a printed circuit board. The PCB was coupled to at least one sensor configured to monitor a physiological condition of the wearer. It was agreed that the monitoring of a physiological condition was the same as measuring biosignals. An embodiment of the invention was a bra in which such a device was installed. It had alternative sensors to measure different types of signal, the sensors being coupled to a monitoring device, an electronics module and a power source such as a battery. Ir also described a pocket in which the monitoring device could be fitted.

Whether the Patent was invalid for Want of Novelty

The above drawing is Figure 5 of 845, Whoop submitted that it shows sensors in a variety of places, outside and within the side regions of the bra, in and outside the underband. It was not in dispute that the sensor marked V7 was in the side region and not in the underband and that V6 was probably another. The drawing suggests that the sensor could be in any of the places shown, which include locations in a side region and not in an underband. Whoop contended that this was a disclosure that anticipated claim 1.

Judge Hacon disagreed. He said in para [35] that for claim 1 of the patent to be anticipated it would have been necessary for 845 to give clear and unmistakable directions to use a single sensor located in a side region of the bra and not in an underhand.  845 disclosed this as one among many possibilities without it being singled out.

It followed that claim 1 did not lack novelty over 845 and therefore neither did claim 2.

Obviousness

According to s.1 (1) (b) of the Patents Act 1977, another condition of patentability is that the invention involves an "inventive step".  S.3  states that an invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of s.2 (2) above (and disregarding s. 2 (3).  

At para [60] of Actavis Group PTC EHF and others v ICOS Corporation and another (2019) 167 BMLR 1, [2020] 1 All ER 213, [2019] Bus LR 1318, [2019] UKSC 15, [2019] RPC 9, Lord Hodge said:

"In addressing the statutory question of obviousness in section 3 of the 1977 Act it is common for English courts to adopt the so-called Windsurfing/Pozzoli structure which asks these questions:

(1) (a) Identify the notional ‘person skilled in the art’;
(b) Identify the relevant common general knowledge of that person
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the ‘state of the art’ and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

(Pozzoli SPA v BDMO SA [2007] EWCA Civ 588; [2007] FSR 37, para 23 per Jacob LJ). "

Identify the "Person Skilled in the Art"

The judge said at para [3] of his judgment that the parties agreed that the skilled addressee would be a team consisting of an individual with experience in the design and manufacture of garments, including bras, and an individual with experience in the use and placement of biosensors.  They also agreed that the expertise of both team members could be combined in one person.

Identify the Common General Knowledge ("CGK")

Judge Hacon considered whether certain bits of information formed part of the CGK between paras [25] and  [52] when discussing the technical evidence but he did not address it as a whole.

Inventive Concept

His Honour said at para [8] that the idea of the invention was to place the apparatus which measures the biosignals at the side of the wearer. The judge also construed claims 1 and 2 of the patent between [10] and [24].

Prior Art

Whoop relied on 845 and PCT application WO 2018/206853 ('853') for "A bra for measuring a physiological signal."

Whether Claim 1 was obvious

Prevayl argued that three steps would have to be taken between 845 and claim 1 in para [42]:

"1) Abandon the 12-lead ECG monitoring device shown in Figure 5.
(2) Decide to use only one sensor.
(3) Choose to use a sensor in a side region and not in the underband."

The judge thought that at most only two steps would be required:

"The skilled team's first step would have been to use one sensor. This is an option taught in US 845, which also teaches 'a variety of sensors designed to sense a person's electrophysiology, biological features and the like' can be used. The first step would necessitate abandoning the Figure 5 ECG 12-lead arrangement. He or she would then have to decide to locate the sensor in a side region and not in the underband."

Prevayl's electronics expert agreed that it would have been part of the CGK that locating a sensor at the side of the bra to measure heart rate would have been a good location from the perspective of functionality. Its expert on bra design said that people did not want unsightly protuberances on the front or back, although if it was just a sensor, these were slim enough to go anywhere.  

His Honour concluded that at the priority date, the skilled team would have known that sensors, with or without a module, could go almost anywhere so far as function was concerned. There were disadvantages in putting either at the front or back, which made the side more attractive, but there were sound design reasons why the sensors should be confined to the underband. That explained why most bras on the market did not have sensors in the side portion outside the underband. However, it was an obvious option despite those disadvantages. There was no mindset of the kind alleged by Prevayl.  The learned judge found that claim 1 was obvious over 845.

Whether Claim 2 was obvious

Claim 1 of 853 claimed:

"A bra (100) for measuring a physiological signal from a body of a user wearing said bra, said bra comprising first (103) and second (104) front portions and first (101 ) and second (102) side wings, wherein the first side wing (101 ) is coupled with the first front portion (103) and the second side wing (102) is coupled with the second front portion (104), characterized in that the bra comprises a measuring device and/or at least two electrodes (105, 106), where said measuring device or at least one electrode (105, 106) is arranged to a module, and wherein the module forms at least a basis of the first (101 ) side wing of the bra."

Prevayl identified two differences between claims 1 and 2 of the patent and 853:

"(1) There is no underband in PCT 853, and
(2) The sensors of PCT 853 are not only in the side region of the bra but extend to the rear region."

Prevayl also pointed out that 853 was not a sports bra.

The judge held in [62] that it would have been obvious having read 853 to make a sports bra with sensors in the side region and not in the underband.  It followed that claims 1 and 2 were obvious over 853,

Infringement

Whoop supplied two products:

• a sports bra with a pocket for a bio-sensor device known as a "Whoop Bra;" and
• a Whoop 4.0 sensor module.

Whoop conceded that the Whoop Bra with a Whoop 4.0 installed in the pocket together would constitute a product within claims 1 and 2 of the patent but denied that the Whoop 4.0 sensor module infringed.

Prevayl argued that s.60 (2) of the Patents Act 1977 applied:

"Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom."

The learned judge considered Mr Justice Arnold's judgment in Nestec SA v Dualit Ltd [2013] EWHC 923 (Pat) where the claimant alleged that the defendant had infringed its patent which claimed an extraction system comprising a device for the extraction of a capsule and a capsule that could be extracted from the device. His lordship found that the capsule constituted means relating to an essential element of the invention.   

Judge Hacon also referred to  KCI Licensing Inc v Smith & Nephew plc [2010] EWCA Civ 1260 and Grimme Maschinenfabrik GmbH & Co KG v Scott [2010] EWCA Civ 1110 for the knowledge requirements for liability under s.60 (2):

"i) The required intention is to put the invention into effect. The question is what the supplier knows or ought to know about the intention of the person who is in a position to put the invention into effect – the person at the end of the supply chain, [108].
ii) It is enough if the supplier knows (or it is obvious to a reasonable person in the circumstances) that some ultimate users will intend to use or adapt the "means" so as to infringe, [107(i)] and [114].
iii) There is no requirement that the intention of the individual ultimate user must be known to the defendant at the moment of the alleged infringement, [124].
iv) Whilst it is the intention of the ultimate user which matters, a future intention of a future ultimate user is enough if that is what one would expect in all the circumstances, [125].
v) The knowledge and intention requirements are satisfied if, at the time of supply or offer to supply, the supplier knows, or it is obvious to a reasonable person in the circumstances, that ultimate users will intend to put the invention into effect. This has to be proved on the usual standard of the balance of probabilities. It is not enough merely that the means are suitable for putting the invention into effect (for that is a separate requirement), but it is likely to be the case where the supplier proposes or recommends or even indicates the possibility of such use in his promotional material, [131]."

The judge directed himself at [87] "that in relation to the supply of a product to a person not entitled to work the invention, there is an act of infringement under s.60(2) if the following are found on the balance of probabilities:

(1) there is in the United Kingdom a supply or offer to supply a means relating to an essential element of the invention, i.e. a means which contributes to implementing the technical teaching of the invention without being of completely subordinate importance, irrespective of where the core of the invention lies;
(2) adaptation of such means or its use together with other means would put the invention into effect; and
(3) at the time of supply or offer to supply, the supplier knows, or it would be obvious to a reasonable person in the circumstances, that (a) adaptation of the means supplied or its use together with other means would put the invention into effect and (b) at least some ultimate users will intend to put the invention into effect in the United Kingdom in that way."

Applying those principles, the judge found that the supply of Whoop 40 modules amounted to an infringement under s.60 (2) of the Patents Act 1977.

Comment

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