Context:
- A few months ago, U.S.-based patent licensing firm Onesta sued BMW in the latter’s home court, the Landgericht MĂĽnchen I (Munich I Regional Court) over one European patent and two U.S. patents (October 30, 2025 ip fray article). The car maker responded with a declaratory judgment (DJ) complaint in the United States District Court for the Western District of Texas, followed by a near-simultaneous motion for an antisuit injunction (ASI) on patent misuse and other grounds (December 16, 2025 ip fray article).
- Judge Alan D. Albright, to whom the case was assigned due to an overlap with two other cases (companion lawsuits to U.S. International Trade Commission (USITC or ITC) cases that were stayed after institution), granted an ex parte temporary restraining order (TRO) with only a superficial and non-binding assessment of the merits (December 17, 2025 ip fray article).
- The TRO is, for now, envisioned to remain in force only until December 30, 2025, though it could be continued or (immediately or later) converted into a preliminary injunction (PI).
What’s new: Yesterday by U.S. Central Time, Onesta filed its opposition brief (which you can find further below). Onesta raises a variety of arguments related to the merits and comity (mutual respect between courts of different jurisdictions), which are explained and analyzed further below.
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Courts and counsel
BMW v. Onesta (case no. 6:25-cv-00581, W.D. Tex.)
The case was initally assigned to United States District Judge Kathleen Cardone. BMW’s complaint suggested that it should ideally be assigned to Judge Alan D. Albright, which indeed happened.
Counsel for BMW: Finnegan, Henderson, Farabow, Garrett & Dunner’s Lionel M. Lavenue, J. Derek McCorquindale (both of Reston, VA), Matthew C. Berntsen (of Boston, MA), and Joseph M. Myles (of Washington, DC).
Onesta has presumably anticipated this course of action, which is why it involved U.S. counsel early on. The Mintz firm advised Onesta with a view to the Munich filing. In the Western District of Texas, the following attorneys entered appearances on Onesta’s behalf on Tuesday:
- Cherry Johnson Siegmund and James’s Mark D. Siegmund, and
- Caldwell Cassady Curry’s Jason D. Cassady, J. Austin Curry, Daniel R. Pearson, and Aisha Mahmood Haley.
To its opposition brief, Onesta attached an expert report written by Professor Peter Georg Picht, who is the chair of Zurich University’s Center for Intellectual Property & Competition Law (CIPCO), an Affiliated Research Fellow at the Max Planck Institute for Innovation and Competition, and the President of ASCOLA, the international Academic Society for Competition Law. He also taught/teaches at King’s College London, the European University Institute (Florence), the Centre for International Intellectual Property Studies (Strasbourg), and the Max Planck Institute in Munich.
Onesta v. BMW (Munich I Regional Court cases nos. 21 O 13056/25 and 21 O 13057/25)
Presiding Judge: Dr. Georg Werner, who will be sworn in as a UPC judge on January 5, 2026 (October 10, 2025 ip fray article) and whose successor as the 21st Civil Chamber’s presiding judge is not known yet. ip fray has heard from the German patent law community that the preferred choice would be Judge Dr. Hubertus Schacht, who is presently sitting by designation on the regional appeals court, the Oberlandesgericht München (Munich Higher Regional Court).
Onesta is being represented in Munich by Peterreins Schley Patent- und Rechtsanwälte’s Dr. Thomas Adam, Dr. Simon Reuter, Dr. Claudia Feller, and Dr. Jan-Malte Schley.
A sworn declaration by Finnegan’s Dr. Johannes Druschel is attached to the U.S. antisuit motion. But BMW’s go-to counsel in German patent litigation (and frequently also counsel for Qualcomm, whose chips are at issue) is the Bardehle Pagenberg firm (ip fray firm profile with numerous achievements). The following Bardehle team is defending BMW and, by extension, Qualcomm in Munich against Onesta:
- Attorneys-at-law Professor Dr. Tilman Mueller-Stoy (“Müller-Stoy” in German), Dr. Martin Drews, and Dr. Tomasz Klama.
- Patent attorneys Dr. Patrick Heckeler, Dr. Christian Haupt, Michael Horndasch, Max Link, and Dr. Maximilian Vieweg.
Two renowned patent law scholars have also provided testimony in support of BMW’s motion: Professor Margo A. Bagley of Emory University, who has also been a faculty lecturer at the Max Planck Institute’s Munich Intellectual Property Law Center since 2012, and Professor Matthias Leistner of Munich’s Ludwig Maximilian University.