The realistic best-case scenario for BMW materialized with respect to costs. But the overall course of events will not necessarily discourage others from pulling an Onesta.
Context:
- Early last month, filings with the United States Court of Appeals for the Federal Circuit (in an antisuit appeal) and the United States International Trade Commission (USITC or ITC) revealed that licensing firm Onesta had agreed on the broad terms of a settlement with chipmaker Qualcomm, which appeared highly likely to put an end to the first BSH-based long-arm assertion of U.S. patents in the Munich I Regional Court (February 6, 2026 ip fray article). Yet a procedural chess game between Onesta and its Munich target, BMW, continued in the U.S. for well over a month as either side wanted the other to withdraw first while Onesta and Qualcomm were apparently still wrangling over details of their deal.
- The connection between an ITC investigation of BMW supplier Qualcomm and the Munich actions was direct. Qualcomm’s co-respondents in the ITC investigation include two of its own customers (phone makers One Plus and Nothing) as well as a different chipmaker, NVIDIA. No NVIDIA-BMW connection was known. A week ago (March 6, 2026), Onesta also filed a joint motion with NVIDIA to stay the ITC investigation with respect to the latter.
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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)
Panel: Presiding Judge Dr. Hubertus Schacht (January 16, 2026 ip fray article), Judge Dr. Benz, and Judge Obermeier.
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.
Bardehle Pagenberg, which scored wins for Qualcomm and NVIDIA in the Unified Patent Court this week (March 11, 2026 ip fray article) issued a press release on its defense of BMW against Onesta’s lawsuits.
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.