BMW AG Announces Resolution of WDTX Declaratory Judgment against Onesta, Following Broad Covenant Not to Sue to BMW AG by Onesta

FOR IMMEDIATE RELEASE
April 23, 2026

WASHINGTON, DC-Finnegan client Bayerische Motoren Werke Aktiengesellschaft (BMW AG) announced today the successful resolution of its declaratory judgment action against Onesta IP, LLC (Onesta) in the United States District Court for the Western District of Texas, Case No. 6:25-cv-00581-ADA (Judge Albright), following Onesta’s issuance of a sweeping irrevocable covenant not to sue.

BMW AG initiated the declaratory judgment action in the Western District of Texas specifically to obtain clear judicial confirmation of non-infringement and invalidity of Onesta’s U.S. Patents Nos. 8,854,381 and 8,443,209 in response to Onesta’s assertion of these two U.S. patents in Munich, Germany. With Onesta’s later withdrawal of those German actions and its filing of a broad covenant not to sue, BMW AG has achieved the principal objective of the WDTX action as to those asserted U.S. patents.

Under the covenant, Onesta irrevocably agrees never to sue BMW AG or any of its successors, customers, affiliates, manufacturers, distributors, or licensees—anywhere in the world—under U.S. Patents Nos. 8,854,381 and 8,443,209 for any past, present, or future vehicles, products, or components. The covenant extends to all related parties and delivers complete and permanent protection for BMW AG.

“This outcome reflects exactly what BMW AG set out to achieve—complete certainty and freedom from Onesta’s claims,” said Lionel Lavenue, lead counsel for BMW. “After securing decisive victories at every stage, BMW AG obtained a comprehensive covenant that eliminates any risk of future litigation under these patents. This result also underscores BMW AG’s commitment to defending its innovations and ensuring that U.S. patents are adjudicated in the proper forum under U.S. law.”

The resolution contributes an update to a multi-jurisdictional dispute in which BMW AG prevailed across the board. In the U.S. District Court for the Western District of Texas, the Court:

1. Granted BMW AG’s request for a temporary restraining order preventing Onesta from pursuing injunctive relief in Germany;
2. Issued a broad anti-suit injunction requiring Onesta to terminate its German infringement actions involving the asserted U.S. patents; and
3. Denied Onesta’s motion to dismiss, rejecting its reliance on an alleged agreement with Qualcomm Incorporated (but which did not provide any certainty).
   
   In parallel, the United States Court of Appeals for the Federal Circuit:
   
   
4. Dismissed Onesta’s appeal and awarded costs to BMW AG, confirming BMW AG as the prevailing party and leaving the anti-suit injunction by Judge Albright fully intact.

With the addition of the global covenant not to sue, BMW AG has now secured additional resolution of the patent infringement dispute—eliminating any present or future exposure under the asserted patents and bringing the WDTX declaratory judgment action to a close on terms entirely favorable to BMW AG.

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

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

About Finnegan
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