Late last year, an unprecedented cross-border patent dispute erupted in the wake of a landmark ruling, BSH Hausgeräte v. Electrolux, in which the Court of Justice of the European Union (CJEU) gave EU courts the power to decide claims of infringement arising outside the EU. In early October, US plaintiff Onesta IP LLC leveraged BSH to file what appears to be the first-ever case to assert US patents in a German court, here targeting BMW in the Munich I Regional Court. The automaker then sought the intervention of the Western District of Texas, where on January 13, District Judge Alan D. Albright orally granted BMW an anti-suit injunction ordering Onesta IP to terminate its German litigation. A frantic back-and-forth ensued as the NPE pursued an emergency appeal, including a dispute over when Judge Albright's order took effect and how that outcome was being represented to the Federal Circuit. After initially denying Onesta IP's request for a stay, the Federal Circuit has now temporarily barred the ASI from taking effect.
In BSH, the CJEU held that national courts in EU member states, as well as Europe's Unified Patent Court (UPC), can exercise long-arm jurisdiction to decide claims of infringement of non-EU patents. The decision thus allows EU national courts and the UPC to award damages and/or impose injunctions for acts of infringement occurring outside the EU, as long as the defendant is domiciled in one of the 18 countries participating in the UPC (for UPC litigation) or in the EU (for national court litigation). German courts and the UPC soon began to wield this power in the wake of BSH, though for the first several months after the CJEU's decision they only did so for non-EU patents issued within Europe.
However, Onesta IP sought to push the envelope further through its litigation against BMW—comprised of three cases filed against the automaker on October 9 in the Munich I Regional Court, all over semiconductor patents originating with AMD: one asserting a European bundle patent (EP 2 473 920, case number 21 O 12768/25) and two each asserting a single US patent (8,443,209, 21 O 13057/25; and 8,854,381, 21 O 13056/25). Per BMW, those complaints target vehicles that include "Qualcomm Snapdragon-System[s]-on-Chip (SoC) with an integrated Adreno-GPU". Notably, as BMW would later highlight, Onesta IP had asserted the '381 patent in an ITC action against Qualcomm and NVIDIA but dropped the patent from that case soon before filing its German litigation.
BMW then filed suit in the Western District of Texas (6:25-cv-00581) on December 15, in part seeking a declaratory judgment that by enforcing the patents outside the US and seeking damages reaching further back than the six years allowed under the US Patent Act (back to April 2018), Onesta IP has misused the two patents-in-suit such that they are unenforceable.
That same day, BMW filed a motion for an ex parte temporary restraining order (TRO) and anti-suit injunction (ASI): The ASI would bar Onesta IP from further litigating the US patents in Munich, from filing an anti-anti-suit injunction in Munich (i.e., one that would prevent BMW from seeking this relief in Texas), and from seeking a preliminary injunction in Munich against BMW; the ASI would also order the NPE to indemnify BMW for any associated costs of litigating its US patents in Munich. The TRO would preserve the status quo while the ASI was pending.
On December 16, Judge Albright granted BMW's motion for a TRO, setting the amount for a security at USD$0. Then, on December 30, Judge Albright extended the TRO until January 13, setting a hearing for that same day. In the leadup to that hearing, Onesta IP indicated it would not further escalate the jurisdictional back-and-forth between the two venues—notifying Judge Albright on January 8 that it "does not intend to request an AASI from the Munich court".
Nonetheless, Judge Albright ruled against Onesta IP at the hearing and converted the TRO into an ASI, barring the patent owner from proceeding with its two German cases asserting US patents.
Parties Spar with Judge Albright over Comity, Jurisdiction, and "Strategery" at Hearing
In the leadup to that dramatic outcome, the hearing saw counsel for the parties engage with Judge Albright on a wide range of novel underlying issues stemming from this case's unique circumstances.
For instance, Finnegan partner Lionel Lavenue, counsel for BMW, offered several theories as to Onesta IP's potential motivation in seeking to assert its patents in Germany. In part, Lavenue suggested that the patent owner could be seeking to avoid eBay, under which NPEs have historically struggled to make the showing of "irreparable harm" needed to win an injunction—whereas in Germany, permanent injunctions are granted far more readily. Daniel Pearson, a principal at Caldwell and counsel for Onesta IP, countered that in the plaintiff's view the German court would determine all issues under US law, and would thus apply eBay—thus rejecting the notion that it sought any "procedural advantage in that regard by being in Germany".
Additionally, Lavenue posited that there is "no estoppel effect for the assertion in Germany for Onesta", such that if it loses in Germany it "could then come to the U.S. and sue again"—to which Judge Albright remarked that whether preclusion would in fact apply is a novel and unsettled issue.
More broadly, Judge Albright indicated later in the hearing that to the extent BMW argued that there was some improper "strategery" going on (likely a reference to Will Ferrell's portrayal of President George W. Bush on Saturday Night Live), he was "not very moved by [that] argument". To the contrary, he stated that he found nothing wrong with an attorney making strategic decisions to "gain whatever advantage they think they can get" for their client. To that end, Judge Albright was also sympathetic to the related argument that Onesta IP was in the right by seeking to leverage the greater speed of German patent litigation.
The parties also discussed the impact of a German court applying US patent law for the first time in this context. For instance, Lavenue remarked that German courts' experience is narrower owing to the bifurcated nature of the country's bifurcated patent litigation system: The German courts that decide infringement do not address validity, which may only be challenged in a separate procedure. As a result, not only have they have not only never considered the validity of a US patent, but they have never ruled on validity whatsoever. Judge Albright remarked in response that one would be "hard pressed to find a judge in Germany who has performed a Markman hearing that's similar to what happens in the United States", a point with which Lavenue agreed.
Judge Albright also expressed concerns about the "loss of the right to a jury trial" that would occur by having US patent infringement be decided in Germany (in which courts decide patent cases without juries). The parties' arguments on this point focused in particular on the right to a jury trial under the procedural circumstances of this case: Lavenue argued for BMW that Federal Circuit law provides a right for jury trial in the context of a declaratory judgment (DJ) action like this one, arguing that this right would "perhaps" attach up until Onesta IP were to disclaim their right to damages under a counterclaim for infringement. In response, Pearson rejected those arguments as "at the very least premature because no jury trial right exists", and BMW would "only [be] entitled to a jury trial if there's no legal claim for relief".
The parties also dealt with the interplay of the US and German cases; for instance, Lavenue contended that having both proceed in parallel would be "duplicative and ridiculous", and it would be inappropriate for the German case to move forward because it would likely proceed faster than the US action.
The discussion also focused at length on related jurisdictional questions, in particular issues of comity underpinning the question of whether the Texas court should enjoin the German litigation. Lavenue contended for BMW that Onesta IP is being hypocritical by saying that it should be the "political branches of government", not Judge Albright, that decides whether Onesta IP gets to sue in Germany, but not arguing that the "political branches of the EU government" should decide whether the German court has jurisdiction, rather than the German court. While Pearson attempted to argue that this issue presented a "delicate issue of comity that must be addressed with great restraint", Judge Albright pushed back forcefully—expressing deep skepticism toward the notion that a German court should get to decide its own jurisdiction, while the American court must exercise restraint in doing so.
Pearson additionally tried to argue that BMW lacks standing to seek an ASI restricting the German litigation—only with respect to Onesta taking action in the German court to restrict the Texas court's jurisdiction—because of the patent owner's commitment not to seek AASI from German court. That said, Judge Albright interrupted and asked him to move onto another argument, indicating that he was less than convinced.
Judge Albright was also unmoved by Pearson's warning that if the court were to hold in a written opinion that a US court has the "extraterritorial power" to award the requested ASI, there is at least the potential for a circuit split on that issue. On that point, Judge Albright reminded counsel that he has historically not taken a wait-and-see approach to issues with potential splits (likely referring to recent opinions in which he has pointed to alleged tensions between Federal and Fifth Circuit law with respect to the factors governing convenience transfers):
. . . I think you can guess how concerned I am in making my decision about whether or not—given my history, whether or not there would be a [c]ircuit split over something I do.
And so it's—generally speaking, I'm—I feel like I need to do the right thing and the Circuit court needs to do whatever they do when they review my decision. So I'm not moved by that either.
Pearson further offered a policy argument in favor of Onesta IP's position—that instead of harming America, it would actually help the country for a German court to decide US patent infringement, because it "strengthens America if other countries want to prevent its citizens from committing torts in the United States". While Judge Albright agreed that "patent infringement is bad", he countered that he "think[s] it's up to the United States district courts to determine whether there's patent infringement of a United States issued patent".
Confusion Ensues over Motion to Stay
Some confusion then arose at the hearing's close, after Judge Albright informed counsel that he was granting BMW's motion for an ASI, ordering Onesta IP to terminate the German case and denying the patent owner's request to stay the injunction—indicating that the court would "get a written order out as quickly as [it] can". Counsel for Onesta IP asked for clarification on how immediate the termination needed to be, prompting Judge Albright to question why there would "be a gap between [him] ordering [Onesta IP] to terminate now and when [it would] have to terminate". In response, counsel clarified that Onesta IP would need to speak with German counsel on the logistics of termination while also ensuring it has adequate time for an emergency appeal with the Federal Circuit—suggesting 24-48 hours. Judge Albright responded he was "giving [Onesta IP] that window".
The following day, on January 14, Onesta IP filed an emergency motion with the Federal Circuit (26-1338)—characterizing Judge Albright's order as having immediate effect, and asking the appellate court for a temporary stay while the parties brief Onesta IP's forthcoming motion to stay under Federal Rule of Appellate Procedure 8, which it said it planned to file on or before January 16. BMW responded by opposing the motion later that day, characterizing Onesta IP's motion as premature because the district court had yet to "even enter[] its final judgment on injunctive relief", referring to the still-forthcoming written order. Per BMW, "there is simply no injunction yet to appeal and jurisdiction is lacking". BMW also argued in its reply brief that Onesta IP's appeal was further deficient because to be valid, a preliminary injunction must be accompanied by the movant's payment of a security determined by the court. Since no written order has issued, BMW explained, no security has been determined.
As later recounted by Onesta IP, BMW then emailed the patent owner, also on January 14, stating that if Onesta IP did not dismiss its German cases by the end of the day, BMW "would file a 'motion to enforce' immediately".
Later that day, the Federal denied Onesta IP's request for a temporary stay without prejudice, citing only BMW's statements "that the injunction 'has yet to take effect' and that the District Court has not 'enter[ed] its final judgment on injunctive relief'". Onesta IP then asked Judge Albright via email for clarification through a status conference, subsequently referring to BMW's characterizations of the effective date as "misstatements". The court denied its request for a conference but responded as follows via email:
As Judge Albright stated on the record, the oral order granting BMW's motion for anti-suit injunction went into immediate effect at the time it was orally granted. The Court's intention was not for the injunction to take effect after release of the written order. The parties should act in accordance with the Court's oral ruling as expeditiously as possible.
The following day, on January 15, Judge Albright issued a clarifying order reiterating that the ASI had taken immediate effect at the hearing—and that "the Court intended to provide Onesta with a reasonable 'window' to request a stay from the Federal Circuit prior to termination". Judge Albright also stated that a full written order was still forthcoming. Later that day, BMW filed a motion to enforce the ASI and asking for an order to show cause why Onesta IP should not be held in contempt of court for failing to dismiss the German cases.
On January 16, Onesta IP then renewed its motion to stay the case, in part highlighting the court's clarifying order as having "removed any ambiguity" as to whether the injunction had taken effect:
[I]ts oral order requiring immediate compliance is an injunction order. It is not going to grant relief in the future; in its view, it already has. The forthcoming "written order" will simply "memoraliz[e] the Court's reasoning.". . . This appeal is appropriate; the filing of this motion was contemplated by the district court itself; and the instant temporary stay motion remains ripe.
(Emphasis in original; citation to Judge Albright's order omitted.) Later that day, the Federal Circuit granted that renewed motion, staying Judge Albright's injunction order "pending further order of this court". The appellate court ordered that Onesta IP file its Rule 8 motion to stay "no later than seven days from the date of entry of the District Court's written order on the injunction", setting a similarly narrow timetable for responsive briefing.
Judge Albright's written order remains forthcoming. If past is prologue, the parties could find themselves waiting awhile, as Judge Albright has previously shown a tendency to sit on fully briefed motions for years. Notable examples include various motions to transfer for convenience out of his courtroom, Judge Albright's handling of which frequently invoked the ire of the Federal Circuit a few years ago. The appellate court ultimately rebuked him for letting such motions remain undecided while moving forward on substantive matters like claim construction. Nevertheless, that practice has persisted, with one order—addressing a case involving the alleged tension between Federal and Fifth Circuit law to which Judge Albright alluded to at the hearing—sitting for three and a half years before its resolution in February 2025 (well after the aforementioned rebukes).
Further coverage of that decision is available at "Judge Albright Denies Convenience Transfer Motion Three and a Half Years Later" (February 2025).
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