Action Filed to Prevent Foreign Courts from Deciding U.S. Patent Claims

FOR IMMEDIATE RELEASE
December 15, 2025

WASHINGTON, DC— Today, Finnegan filed a declaratory judgment action, on behalf of Bayerische Motoren Werke Aktiengesellschaft (BMW), asserting misuse, non-infringement, and invalidity against Onesta IP, LLC (Onesta) in the Western District of Texas (docket number: 6:25-cv-00581). The DJ action addresses issues raised by Onesta’s recent litigation abroad, where Onesta asks German courts to adjudicate infringement on U.S. patents. In addition the DJ, BMW also seeks a Temporary Restraining Order and Preliminary Injunction, asking the WDTX to ensure that any adjudication of a U.S patent occurs in the U.S, not in Germany.

Onesta is a U.S.-based non-practicing entity (NPE), which a few weeks ago asserted two U.S. patents (Nos. 8,854,381 and 8,443,209) before the German Regional Court Munich I (docket numbers: 21 O 13056/25; 21 O 13057/25). The infringement allegations by Onesta against BMW are based on activities occurring in the United States, raising significant questions about the territorial nature of patent rights and the principles of international comity.

Finnegan partner Lionel Lavenue said, “U.S. patent rights should be adjudicated exclusively by U.S. courts. Allowing foreign courts to decide U.S. patent issues risks conflicting judgments and undermines the integrity of U.S. law. These new filings for BMW seek to ensure clarity and consistency in the application of U.S. patent rights.”

Finnegan is pursuing all available legal remedies to obtain clarification from the U.S. courts on this unprecedented issue.

Contacts

Terra Liddell, Chief Marketing Officer
terra.liddell@finnegan.com

Angela Robinson, Director of Branding and Communications
angela.robinson@finnegan.com

About Finnegan
When your most valuable assets are ideas, innovation, and brand—you need the best to protect them. Finnegan, a premier intellectual property law firm, is trusted by global leaders to protect and advance what sets them apart. With 11 offices across the globe, we bring local insight and global reach to every IP challenge. We are located in Atlanta, Boston, London, Munich, Palo Alto, Reston, Seoul, Shanghai, Taipei, Tokyo and Washington, DC. From high-stakes litigation to cutting-edge patent strategy and innovative brand management, we deliver unmatched depth, agility, and results. If it is IP, it is Finnegan. Please visit us at www.finnegan.com or follow us on LinkedIn to see how we’re shaping the future of IP, one breakthrough at a time