IP-2022-000067 - [2025] EWHC 399 (IPEC)

Given the way that novelty was argued, one might have thought that the only issue in relation to inventive step was whether it would have been obvious to the skilled reader of US 845 at the priority date that if one sensor were used, it could be in a side region and not in the underband.

However, Prevayl expanded this into a three-step change from US 845, all of which had to be contemplated by the skilled team in order to arrive at the claim 1 invention and considering them individually, Prevayl said, was the sort of step-by-step approach deprecated Lord Diplock in Mills & Rockley (Electronics) Limited v Technograph Printed Circuits Limited [1972] RPC 346.

Prevayl’s starting point was Figure 5: the skilled team would have recognised that Figure 5 showed sensors which would be attached to a conventional 12-lead electrocardiogram (ECG) monitor. This contention was supported by the evidence of Dr Skinner. He said that the sensors of an ECG system have to be positioned broadly across the garment to capture the relevant information about the heart.

Prevayl also relied on these passages from US 845:

Prevayl submitted that it would not occur to the skilled team to use any fewer than the necessary full complement of sensors attached to the 12-lead monitor. Even if it did, neither US 845 nor the common general knowledge (CGK) would provide any guidance as to which sensors should remain and which be left out.

This led to Prevayl’s three steps:

In my view, at most two steps are 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.

Whoop argued that the background section of the Patent gives the game away. The Patent explains that positioning the electronics module or related components on the chest or between the shoulder blades can be both uncomfortable and unsightly. Dr Skinner confirmed that this was CGK. This inevitably left the side portion as an obvious location, optionally either in or outside the underband.

I agree that no apparent inventive step springs from the pages of the Patent. On the other hand, simple inventions can be especially vulnerable to hindsight.

Dr Skinner said that it was part of the CGK to have the module and the sensor in a single unit. Given the background knowledge that there are disadvantages in locating the sensors at the front or back, whether with a module or without, Prevayl’s argument on inventive step would best have been supported by a reason why locating at the side would have been seen by the skilled team as carrying one or more disadvantages so that location at the side would have been dismissed at the priority date, and so not an obvious workable alternative.

None was identified. Instead, Prevayl’s argument was that there was a ‘mindset’ among those in the art that the sensor or sensors had to be placed at the front or back, or if at the side then in the underband. The evidence relied on in support of the existence of this mindset was the lack of evidence of any bra within the CGK that had any other arrangement.

Prevayl’s electronic monitor expert, Dr Skinner, confirmed that it would have been part of the CGK that locating a sensor at the side of the bra to measure heart rate was a good location from the perspective of functionality. Prevayl’s expert on bra design was asked about this from the designer’s point of view. Mr Thomas 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.

Mr Thomas explained that because modules and sensors are structurally hard, the designer of a bra wanted to locate them in a stiff part of the bra, the underband. It would have been more challenging put them in other parts of the bra where there is more variability of warp and weft. However, he accepted that this would have been something that the designer could have done as a matter of CGK.

What I take from this evidence is that at the priority date the skilled team would have known that the 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. This explains why most bras on the market did not have sensors in the side portion outside the underband. However, it was an obvious option despite disadvantages. There was no mindset of the kind alleged by Prevayl.

I find that claim 1 of the Patent is obvious over US 845.