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., today (December 30, 2025 ip fray article). Meanwhile Onesta assured Judge Albright that it would not seek an anti-antisuit injunction (AASI) in Munich (January 10, 2026 ip fray article).
What’s new & direct impact: The outcome of today’s hearing was the conversion of the TRO into a PI. While the TRO merely preserved the status quo, Judge Alan D. Albright’s PI now requires Onesta immediately to withdraw those Munich lawsuits over U.S. patents. Unless Onesta secures an emergency stay from the United States Court of Appeals for the Federal Circuit, it will have to comply and withdraw (though it could later refile in the event of a successful appeal).
Wider ramifications: There have been misconceptions, even on the part of generally very competent people, about the role of the Landgericht MĂĽnchen I (Munich I Regional Court). To accuse that court of overreach based on Onesta’s lawsuits against BMW is doubly unfair and unreasonable:
- The Munich court has not done anything in that case so far other than serving the complaint on BMW. There has not been a decision comparable to UK rulings throwing out jurisdictional challenges.
- If the Munich court still had to decide on its jurisdiction over Onesta’s claims, it would simply be bound by applicable law, with the BSH Hausgeräte v. Electrolux decision by the European Court of Justice (ECJ) formally being more about the relationship between the courts of EU member states but also mentioning the possibility of the enforcement of non-EU patent rights against defendants domiciled in the EU.
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 MĂĽnchen (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.