FOLLOW US

The U.S. Court of Appeals for the Federal Circuit has declined, for now, to intervene in a Texas federal court order barring patent holder Onesta IP LLC from pursuing infringement actions against BMW in Germany.

In a brief order issued Wednesday, the Federal Circuit denied an emergency motion filed by Onesta seeking to stay U.S. District Judge Alan Albright’s oral ruling from Tuesday, which granted BMW’s request for an injunction preventing Onesta from continuing two patent lawsuits in German court. Judge Albright indicated at the time that a written order would follow.

Shortly after filing the emergency request, however, Onesta moved to strike its own motion, telling the appellate court that the filing was “nonfinal,” had been “inadvertently filed,” and was “incorrect.” As a result, the Federal Circuit denied the motion without prejudice, noting that a separate motion to stay pending appeal is expected.

Judge Albright’s injunction ruling followed a temporary restraining order he issued roughly a month earlier at BMW’s request. The automaker argued that Onesta, which BMW characterizes as a nonpracticing entity, was attempting to obtain an injunction in Germany that could undermine the Texas court’s jurisdiction over related patent disputes.

According to BMW, Onesta has asserted two U.S. patents in Munich while also litigating related claims in the Western District of Texas. BMW further said Onesta filed a complaint with the U.S. International Trade Commission in April, accusing several technology companies of infringing one of the same patents, triggering an ITC investigation.

The patents concern silicon components that Onesta claims BMW incorporated into computer processors used in vehicle head units, BMW said.

BMW attorney Lionel Lavenue welcomed Judge Albright’s ruling, saying it protects U.S. patent jurisdiction.

“[The decision] defends the United States patent system from inconsistent rulings of foreign courts, by ordering Onesta to dismiss the 2 lawsuits in Germany on 2 U.S. patents,” Lavenue told Law360 on Thursday. He added that, as of that day, Onesta had not yet complied with the order.

“As seen in the recent developments at the U.S. Court of Appeals for the Federal Circuit, BMW is prepared to defend Judge Albright’s decision that United States patents should be adjudicated in the United States, not in Germany,” Lavenue said.

Counsel for Onesta did not immediately respond to a request for comment.

The patents at issue are U.S. Patent Nos. 8,854,381 and 8,443,209.

BMW is represented by J. Derek McCorquindale, Lionel Lavenue, Joseph Myles, David K. Mroz, Matthew Berntsen and David T. Faurie of Finnegan Henderson Farabow Garrett & Dunner LLP.

Onesta is represented by Aisha Haley, Austin Curry, Daniel Pearson and Jason Cassady of Caldwell Cassady Curry PC and Mark Siegmund of Cherry Johnson Siegmund James PLLC.

The district court case is Bayerische Motoren Werke Aktiengesellschaft v. Onesta IP LLC, case number 6:25-cv-00581, in the U.S. District Court for the Western District of Texas.
The appellate case is Bayerische Motoren Werke Aktiengesellschaft v. Onesta IP LLC, case number 26-1338, in the U.S. Court of Appeals for the Federal Circuit.