One-to-One with Tom O’Reilly, discussing patent pool licensing and its impact on the wireless charging market.

I recently had an opportunity to sit down with Tom O’Reilly, formerly manager of public relations and market research at MPEG LA and Via LA. We discussed patent pool licensing and its impact on the wireless charging market. Here are the excerpts from the interview:

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Dinesh Kithany (DK): What is a patent pool and what should the wireless charging community know about patent pools?

Tom O’Reilly (TO): Generally, a patent pool is an agreement between multiple companies to license their intellectual property to many companies to create efficiency versus individual license agreements. When set up correctly, patent pools have been proven to be beneficial to patent owners, companies making products using the patents, and end-users by ultimately providing cost savings to all involved.

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DK: What do you mean by ‘set up correctly’, and what happens when a patent pool is not set up correctly?

TO: There are a few factors that come into play in terms of a patent pool being set up correctly. They need to benefit everyone in the chain – the patent owners, implementers, and end-users – with license terms that are fair and reasonable for both the patent owners and implementers.  The patent owners need to be fairly compensated for their investment, otherwise there is no incentive for them to join a patent pool. 

On the other side, if the royalty is too high, users will not sign the license.  If one group benefits significantly more, or less than the other, a patent pool generally will not work. Transparency, fairness, and independence are also critical.  License terms should be the same for all users, big and small, and made easily available to interested parties.  Finally, the pool must meet a business need.

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DK: Are there examples of patent pools that have not been successful?

TO: Plenty. Just using MPEG LA as an example, as many successful programs as we had, we also had some duds. In some cases, the market did not develop the way we expected. In the case of the CRISPR biotech pool license we launched, which truly could have been beneficial to the market, too few key patent holders were willing to come on board and license their patents through the pool.

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DK: What do executives in the wireless power business need to know about patent pools?

TO: MPEG LA introduced a Qi-specific license in 2020.  MPEG LA has since been acquired by Via LA, which continues to offer the Qi license.  There are currently 10 patent owners in the pool license including the likes of WiTricity, Convenient Power, Philips and Intel. A complete list of licensors may be found here (click), and Via currently lists a few dozen companies as licensees. A complete list of licensees may be found here (click).

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DK: To which companies in the wireless power business does Via’s Qi license apply?

TO: I am not a lawyer, so this should not be construed as legal advice, but any companies selling products that are either Qi-certified or Qi-compliant may benefit from Via’s Qi license. 

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DK: What do you mean by ‘benefit’?

TO: It means that they likely are using one or more of the patents in the pool license and therefore need coverage under those patents.  The Qi patent pool is likely an efficient way to do that, but I would suggest that such companies either review the license or have their attorney review the license.

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DK: I noticed that none of the largest equipment makers, including smartphone companies offering Qi charging, are among the companies licensed.  Why is that?

TO: It’s a good point. I am not in a position to know or guess why none of those companies are licensed.  But, for the Qi license to be successful long-term, it’s safe to say that those companies will need to come on board.

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DK: What is the end game of a patent pool company, and how likely are they to sue companies using but not paying for patents in the pool license?

TO: Based on my 16 years working for a couple of patent pool companies and also observing other patent pool companies, it is generally not in their best interest to sue infringers.  One or more of the patent owners would need to bring suit, which can be both expensive and possibly dangerous.  Education and a license that is fair and reasonable to licensees is the best approach.  That said, it is not uncommon that some of the patent holders in a patent pool, especially in its early stages, need to bring an infringement suit against one or more prospective licensees that are not otherwise willing to take the license or otherwise license patents it uses in its products.

End of Part 1: to be continued.

About:

Tom O’Reilly has more than 15 years of experience managing consumer electronics market intelligence for a patent pool licensing company and spent an additional 10 years as a trade journalist/editor in the global digital media fulfilment and logistics industry. 

Dinesh Kithany has more than 27 years of experience in the field of market research. He has been a technology analyst for nearly 15 years of which the last 8 years have been covering wireless power and power supply sectors. Before founding Wired & Wireless Technologies (WAWT), a strategic technology analyst and consultancy firm, he had worked in global analyst firms such as IHS Market (now part of S&P Global) and Informa (Omdia). He is passionate about research and is well-networked and recognized in the industry. Through his extensive research and discussion with companies across the ecosystem, he publishes comprehensive research on the wireless power market through its ‘Wireless Power Intelligence Service’.

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