Context: Earlier this week, we reported that licensing firm Onesta, now famous for its U.S. patent assertions in Munich against BMW, has reached a principal agreement on a settlement with BMW vendor Qualcomm (February 8, 2026 ip fray article). At the time, Onesta was keeping up the pressure on BMW regardless. As was the Munich I Regional Court, where the 21st Civil Chamber’s newly-appointed Presiding Judge Dr. Hubertus Schacht scheduled a trial for October 14, 2026, which was relatively soon given the first-impression nature of those patent assertions.
There has since been a noticeable change of tone and tactics. Let’s look at the cross-jurisdictional chess board and what other litigants could learn from this.
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Courts and counsel
BMW v. Onesta (case no. 6:25-cv-00581, W.D. Tex.; PI appeal: case no. 2026-1338, Fed. Cir.)
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, Yi Yang (both of Boston, MA), and Aaron L. Parker, Joseph M. Myles, David T. Faurie, and Victor M. Palace (all four 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:
- 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 in district court, 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: On February 1, 2026, Judge Dr. Hubertus Schacht, who is presently sitting by designation on the regional appeals court, the Oberlandesgericht München (Munich Higher Regional Court), will become the 21st Civil Chamber’s Presiding Judge (January 16, 2026 ip fray article).
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 also provided testimony in support of BMW’s motion in district court: 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.
In the Matter of Certain Integrated Circuits, Electronic Devices Containing the Same, and Components Thereof (ITC inv. no. 337-TA-1450)
Administrative Law Judge: Monica Bhattacharyya.
Counsel for Onesta: Mintz’s Michael T. Renaud, Adam S. Rizk, Samuel F. Davenport, William Meunier, Marguerite McConihe, Michael McNamara, Peter Snell, Matthew A. Karambelas, Catherine Xu, Kumar Ravula, Sean Casey, Courtney Herndon, Paul Weinand, Laura Petrasky, Hannah M. Edge, and Yanyi Liu.
Counsel for Qualcomm: Polsinelli’s Deanna Tanner Okun (former ITC chair), Daniel F. Smith, Lauren E. Peterson, and Sean M. Wesp; as well as Jones Day’s William E. Devitt, Marc S. Blackman, Matthew J. Hertko, Kristina N. Hendricks, Vishal V. Khatri, Jennifer L. Swize, Yury Kalish, and Keith Davis.