US judge orders Onesta to withdraw Munich lawsuits against BMW

It is unsurprising that a US court would assert its right to decide a US patent infringement suit rather than leaving it to a foreign court. In Onesta vs BMW, US judge Alan Albright of the Western District of Texas has now ordered that the NPE may not proceed with its suit at Munich Regional Court.

JUVE Patent reported in early November that BMW faces three infringement suits from Onesta in Munich concerning processor technology for head units in cars. The company is seeking injunctive relief and damages (case IDs: 21 O 12768/25, 21 O 13056/25 and 21 O 13057/25).

Two of the lawsuits are based on US patents. The NPE entered new territory for infringement actions in Europe with these claims. Based on the US patents, Onesta’s claims are a consequence of the CJEU’s decision in BSH Hausgeräte vs Electrolux. This ruling revitalised cross-border practice in Europe and enabled the UPC’s long-arm jurisdiction.

The NPE argues that since BMW is based in Munich and builds models such as the BMW i4 there for export to the US with the allegedly infringing head units, the protection of the two patents takes effect when crossing the US border. Because BMW thus makes use of the protected technology, the company should not be allowed to manufacture such models for US export.

Since JUVE Patent revealed Onesta’s claims in Munich, experts are closely following the case. It could provide an answer to the question of how far the jurisdiction of European courts extends.

Right to a jury

Judge Albright has now given an initial answer to this question by prohibiting the NPE from proceeding with the two actions in Munich. An important argument was likely that the proceedings in Munich concerning the two US patents would have violated the right to a jury trial.

According to JUVE Patent sources, Onesta immediately filed an expedited appeal to the US Court of Appeals for the Federal Circuit.

Experts believe Onesta must have anticipated that BMW would respond with an ASI application in the US when filing the lawsuit in Munich.

In December 2025, BMW filed a declaratory judgment action in the Western District of Texas seeking a temporary restraining order and an anti-suit injunction (case ID No. 6:25-cv-00581 (W.D. Tex. Dec. 16,2025).

Onesta had also recently assured the US court that it would not seek an anti-anti-suit injunction in Munich — likely to undermine BMW’s ASI motion.

Contempt of court

Onesta is now free to disregard judge Albright’s order and proceed with the proceedings in Germany. In other ASI proceedings, parties often ignore ASIs from the other side.

However, in this case, the NPE must expect severe penalties under US law. US courts can seize assets in the event of contempt of court. This should not affect the NPE itself, but the court could also impose prison sentences on its managers in Delaware, which would likely hit harder. These could apply until Onesta complies with the ASI order.

No new development in Munich

Judge Albright’s ASI applies immediately. According to reports, Onesta has not yet taken any action in Germany to comply. It is not known whether the NPE intends to do so. The company has not yet responded to an enquiry from JUVE Patent.

It is also currently unclear whether a US court would directly order coercive measures against Onesta given the appeal. According to experts, the appeal has no suspensive effect. Onesta could potentially mitigate coercive measures by suspending the two Munich proceedings.

Munich Regional Court has not yet scheduled an oral hearing. BMW is currently preparing its written response to Onesta’s lawsuit. The proceedings concerning EP 2 473 920 are not affected by the ASI.

Finnigan against Mintz

Peterreins Schley represents Onesta in the German proceedings, while Mintz represents the NPE in the US proceedings.

In the German proceedings, BMW is again relying on regular counsel Bardehle Pagenberg. Finnegan Henderson Farabow Garrett & Dunner is handling the US proceedings.