Prevayl Innovations Limited v Whoop Inc

For indirect patent infringement under section 60(2) of the Patents Act 1977, supplied means need not embody the inventive concept or constitute the whole patented product. It is enough that they contribute to the technical teaching without being of completely subordinate importance, that their adaptation or use with other means would put the invention into effect, and that the supplier has the required knowledge of that intended use.

For novelty, a disclosure of one possibility among many does not anticipate a claim unless it gives clear and unmistakable directions to use the claimed combination. An invention may nevertheless lack inventive step where the claimed arrangement is an obvious workable option, despite practical disadvantages and despite the absence of identical common general knowledge examples.

Prevayl owned a patent for a smart bra measuring biosignals, requiring the entire sensor assembly to be located in a side region and outside the underband, with a further claim concerning a pocket. It alleged that Whoop infringed by supplying a smart bra and a removable sensor module.

Whoop counterclaimed for invalidity on grounds of lack of novelty and inventive step over US Patent Application 2018/0317845 and PCT Application WO 2018/206853. The court also had to determine whether supplying the sensor module alone amounted to indirect infringement under section 60(2) of the Patents Act 1977.

1. Construction. The sensor assembly meant the entirety of the sensors used. Claim 1 therefore required all sensors to be in one side region and not in the underband. Claim 2 did not require the sensor assembly to be located inside the pocket; the pocket could house the electronics module.
2. Novelty. US 845 disclosed a bra with sensors in various possible locations, including a side region outside the underband. That was not a clear and unmistakable direction to use the single-sensor arrangement required by claim 1. Claims 1 and 2 were therefore novel over US 845.
3. Inventive step. Starting from US 845, the skilled team would use one sensor and locate it in a side region outside the underband. The evidence showed functional advantages in the side location and no identified disadvantage that would have caused it to be dismissed. There was no relevant technical mindset against that arrangement. Claims 1 and 2 were obvious over US 845.
4. Both claims were also obvious over PCT 853. The skilled team would have considered adapting the disclosed side-region sensor arrangement for a sports bra by adding an underband. The pocket in claim 2 was an obvious design option.
5. Indirect infringement. Section 60(2) requires, on the balance of probabilities: (i) supply of means relating to an essential element, meaning means contributing to the technical teaching without being of completely subordinate importance; (ii) adaptation or use with other means which would put the invention into effect; and (iii) knowledge, or objective obviousness, that such use would put the invention into effect and that at least some ultimate users would intend that use in the United Kingdom.
6. The Whoop 4.0 module related to an essential element because the measuring apparatus was a central feature of the claimed bra, and its use with the Whoop Bra put the invention into effect. The supply of the module therefore infringed indirectly. The Patent was invalid for lack of inventive step; had it been valid, both the Whoop Bra and Whoop 4.0 supply would have infringed.