Context:
- In October, non-practicing entity (NPE) Onesta filed three parallel patent infringement cases against Munich-based BMW in the Landgericht München I (Munich I Regional Court), two of them over U.S. patents (October 30, 2025 ip fray article). The assertion of non-German patents in a German national court was based on the BSH Hausgeräte v. Electrolux case law of the European Court of Justice (ECJ) (February 25, 2025 ip fray article).
- BMW filed a declaratory judgment (DJ) lawsuit against Onesta in the United States District Court for the Western District of Texas followed by an antisuit and anti-anti-antisuit injunction (ASI/AASI) motion (December 16, 2025 ip fray article).
- Initially, Judge Alan D. Albright granted a temporary restraining order (TRO), which is more preliminary than a preliminary injunction (PI), until today (December 17, 2025 ip fray article).
- Onesta’s opposition brief raised various arguments of different strength, among them references to copyright-related case law and practice (December 24, 2025 ip fray article).
What’s new: Yesterday (December 29, 2025), BMW filed a reply brief in support of its motion (shown further below). Today, Judge Albright granted BMW’s request to extend the TRO. This first and likely final extension is until January 13, 2026, the day on which Judge Albright will hear the motion (via Zoom). The extension is based on a finding of a substantial risk of irreparable harm to BMW as well as to the jurisdiction of the U.S. district court in the event of Onesta obtaining and enforcing a Munich AASI.
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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 was 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.