BARDEHLE PAGENBERG is proud to announce another success for Bayerische Motoren Werke Aktiengesellschaft (BMW) in its legal battle against Onesta IP, LLC (Onesta). Onesta has withdrawn all of its infringement actions today, effectively abandoning its efforts to assert U.S. patents in Germany. Notably, together with the withdrawal, Onesta further irrevocably waived any and all conceivable substantive claims against BMW arising from the patents-in-suit. Consequently, Onesta will be required to bear the entire costs of the proceedings. Proceedings on cost reimbursement will follow shortly.
Prior to the withdrawals, Onesta had filed a notice in the U.S. District Court for the Western District of Texas (WDTX) regarding a settlement with Qualcomm, BMW's chip supplier.
Onesta's withdrawal concludes a German patent dispute that had received significant international attention. For the first time, a German venue was used to assert U.S. patents. Notably, the U.S. District Court for the Western District of Texas issued an anti-suit injunction ("ASI"), which established the exclusive jurisdiction of U.S. courts for U.S. patent disputes and prohibited Onesta from continuing the Munich proceedings on U.S. patents.
Case background
This case represented the first instance where U.S. patents were asserted before a national EU-member state court following the European Court of Justice's (ECJ) pivotal ruling in BSH v Electrolux. The ECJ's decision had established far-reaching jurisdictional principles for centralized patent infringement proceedings, supposedly offering plaintiffs unprecedented opportunities for forum selection on a global scale.
On October 9, 2025, Onesta, a non-practicing entity, filed three patent infringement lawsuits against BMW at the Regional Court of Munich I, based on two U.S. patents (case nos. 13056/25 and 13057/25) and a European patent (case no. 12768/25). In response, BMW filed a declaratory judgment (DJ) complaint in the U.S. District Court for the Western District of Texas on December 15, 2025, accompanied by a motion for an ASI to stay the German proceedings (case no. 6:25-cv-00581). The ASI hearing took place on January 13, 2026, and concluded with Judge Alan D. Albright granting BMW's motion, orally ordering Onesta to terminate the German lawsuits. The written order was rendered on February 13, 2026. The order was appealed by Onesta. The appeal proceedings are pending at the U.S. Court of Appeals for the Federal Circuit (case no. 26-1338).
Global implications
Despite the early stage of the proceedings, this set of proceedings marked, among other things, a significant step in global patent litigation, addressing some of the key questions raised by the ECJ's BSH v Electrolux ruling. While the ECJ confirmed that invalidity defenses in principle do not restrict international jurisdiction, it remains unclear whether the decision applies to patents from non-EPC states or to proceedings in bifurcated systems. Additional uncertainties include recognition and enforcement of cross-border decisions, and the role of "anti-suit" or "anti-enforcement" strategies. The criteria for suspending centralized cross-border infringement proceedings due to invalidity objections also require clarification. The Texas Court's prior ASI decision highlights the potential for courts outside the EU to assert their own "long-arm" jurisdiction, shaping the future of global patent litigation.
BMW's legal team, led by BARDEHLE PAGENBERG's Professor Dr. Tilman Müller-Stoy in Germany and Finnegan's Lionel Lavenue in the U.S., successfully demonstrated the risks posed by Onesta's actions, ultimately securing a success for BMW.
Although the cost reimbursement procedure will follow directly, and a nullity action against Onesta's European patent remains pending, it can already be said that BMW has achieved a successful defense.
Representatives of BMW AG:
BARDEHLE PAGENBERG (Munich)
Prof. Dr. Tilman Müller-Stoy (Attorney-at-Law (Rechtsanwalt), Certified IP lawyer, Commercial Mediator (MuCDR), UPC Representative, Partner)
Dr. Patrick Heckeler (German and European Patent Attorney, UPC Representative, Partner)
Dr. Martin Drews (Attorney-at-Law (Rechtsanwalt), UPC Representative, Partner)
Dr. Christian Haupt (German and European Patent Attorney, UPC Representative, Partner)
Michael Horndasch (German and European Patent Attorney, UPC Representative, Senior Associate)
Max Link (German Patent Attorney)
Dr. Tomasz Klama (Attorney-at-Law (Rechtsanwalt), UPC Representative)
Finnegan, LLP (Reston, USA)
Lionel M. Lavenue (Patent Attorney, Partner)
Representatives of Onesta IP, LLC:
Peterreins Schley
(Munich)
Dr. Thomas Adam, Attorney-at-Law
Dr. Simon Reuter, Attorney-at-Law
Dr. Claudia Feller, Attorney-at-Law
Dr. Jan-Malte Schley, German Patent Attorney
Regional Court of Munich I
Presiding Judge Dr. Schacht
Judge Dr. Benz
Judge Obermeier