Albright Grants BMW’s Antisuit Injunction Against Onesta

Judge Alan Albright of the U.S. District Court for the Western District of Texas has granted Finnegan client BMW’s motion for an antisuit injunction, preventing nonpracticing entity Onesta IP from advancing two infringement actions it filed in Germany asserting U.S. patents. The ruling reinforces that disputes involving U.S. patents should be adjudicated in U.S. courts under U.S. law. 

Finnegan partner, Lionel Lavenue, who represents BMW in the U.S. litigation, explained that Judge Albright emphasized the constitutional importance of the American jury system during the January 13 hearing. Because German courts do not provide a jury right, allowing the foreign actions to proceed would undermine that protection. Lionel noted that the judge also stressed that “U.S. patents ought to be litigated in U.S. courts,” and attempts to sidestep that framework “didn’t sit well with him.” 

Lionel stated, “This outcome safeguards American innovation, ensures fair and predictable enforcement of U.S. intellectual property rights and upholds the principle that U.S. patents are adjudicated under U.S. law by U.S. courts.” 

He also highlighted the broader jurisdictional question at the center of the dispute: “The question is, can a foreign court address territorial limitations of a U.S. patent?” Onesta’s German filings were widely viewed as a test of whether the EU’s BSH Hausergate v. Electrolux decision could extend crossborder jurisdiction to U.S. patents, an issue closely watched across the global patent community. 

Read  Albright Grants BMW’s Antisuit Injunction Against Onesta