Context: Shortly before the turn of the year, Judge Alan D. Albright of the United States District Court for the Western District of Texas extended BMW’s antisuit injunction against licensing firm Onesta’s enforcement of U.S. patents in Munich, which injunction presently has the procedural status of a temporary restraining order (TRO) and not (yet) of a preliminary injunction (PI), and scheduled a motion hearing for January 13, 2026, i.e., this coming Tuesday (December 30, 2025 ip fray article).
What’s new: Onesta made a filing on Thursday (January 8, 2025) to inform Judge Albright of there being no intent whatsoever to seek an anti-antisuit injunction (AASI) from the Landgericht MĂźnchen I (Munich I Regional Court) against BMW’s U.S. case, including the antisuit motion pending before Judge Albright. BMW had suggested the opposite: “Onesta is highly likely to seek and enforce a retaliatory AASI in the Munich courtârelief âvery swiftlyâ and âfrequently granted in German patent infringement proceedingsâ to counter ASIs.”
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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. BMWâs complaint suggested that it should ideally be assigned to Judge Alan D. Albright, which indeed happened.
Counsel for BMW: Finnegan, Henderson, Farabow, Garrett & Dunnerâs 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 Onestaâs behalf on Tuesday:
- Cherry Johnson Siegmund and Jamesâs Mark D. Siegmund, and
- Caldwell Cassady Curryâs 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 Universityâs 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 Kingâs 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 Chamberâs 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 MĂźnchen (Munich Higher Regional Court).
Onesta is being represented in Munich by Peterreins Schley Patent- und Rechtsanwälteâs Dr. Thomas Adam, Dr. Simon Reuter, Dr. Claudia Feller, and Dr. Jan-Malte Schley.
A sworn declaration by Finneganâs Dr. Johannes Druschel was attached to the U.S. antisuit motion. But BMWâs 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 (âMĂźller-Stoyâ 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 BMWâs motion: Professor Margo A. Bagley of Emory University, who has also been a faculty lecturer at the Max Planck Instituteâs Munich Intellectual Property Law Center since 2012, and Professor Matthias Leistner of Munichâs Ludwig Maximilian University.