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Courts, counsel and experts
BMW v. Onesta (case no. 6:25-cv-00581, W.D. Tex.)
The case was initallyassigned to United States District Judge Kathleen Cardone. BMW’s complaint suggested that it should ideally be assigned to Judge Alan D. Albright, which happened on Tuesday.
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. So far, U.S. counsel for Onesta has not entered an appearance in the U.S. proceedings.
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 one of the first days of January (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 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 supporto f 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.