Context: On Tuesday, we reported within about two hours of a decision by Judge Alan D. Albright of the United States District Court for the Western District of Texas to convert BMW’s antisuit temporary restraining order (TRO) into a preliminary injunction (PI) and to order Onesta to withdraw its Munich lawsuits over two U.S. patents (January 13, 2026 ip fray article). Onesta, which had declared on the eve of the Texas hearing that it was not going to seek an anti-antisuit injunction (AASI) in Munich, was obviously going to appeal.
What’s new: In a rare case in which a motion, the opposition brief, the voluntary reply brief and the decision were filed within 24 hours (or even much less) of each other, the United States Court of Appeals for the Federal Circuit yesterday (January 14, 2026) denied Onesta’s motion for an emergency stay without prejudice. Onesta had argued that in the absence of a stay (which Judge Albright had previously denied), it would have to withdraw the Munich lawsuits now.
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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. But after what Presiding Judge Dr. Oliver Schoen (“Schön”) in German of the court’s 7th Civil Chamber said at an OxFirst event today, we assume that the chosen one is Judge Dr. Hubertus Schacht, who is presently sitting by designation on the regional appeals court, the Oberlandesgericht München (Munich Higher Regional Court) (previous article and LinkedIn post).
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.