Fed. Circ. Ends Anti-Suit Injunction Appeal in BMW Case

The U.S. Court of Appeals for the Federal Circuit  granted Finnegan client BMW’s motion to dismiss Onesta IP’s appeal of an anti‑suit injunction that barred Onesta from pursuing German litigation over U.S. patents. The court’s order leaves intact Western District of Texas Judge Alan Albright’s January anti-suit injunction, which prohibited Onesta from continuing its foreign actions involving U.S. patent rights. The Federal Circuit also awarded BMW its costs as the prevailing party. 

Finnegan partner and lead counsel for BMW, Lionel M. Lavenue, emphasized the broader significance of the decision, stating that maintaining the injunction serves as "a strong deterrent against improper attempts to assert U.S. patents in foreign courts.” 

He further noted that the ruling reinforces core principles of U.S. patent law. "This outcome reinforces the fundamental principle that U.S. patents must be adjudicated exclusively in U.S. courts under U.S. law—preserving essential protections like broad discovery and the right to a jury trial—and enables BMW AG to continue defending its rights in the appropriate forum,” he said. 

The appeal became moot after Onesta reached a settlement with Qualcomm, BMW’s chip supplier, but the parties disputed whether BMW should recover costs. The Federal Circuit ultimately sided with BMW, issuing a brief order concluding simply, "Costs to BMW.” 

The underlying dispute began when BMW sought to prevent Onesta from litigating U.S. patents in Germany, an approach BMW characterized as an unprecedented attempt to sidestep U.S. adjudication. Judge Albright agreed, finding that allowing the German cases to proceed would undermine U.S. policy interests in domestic patent adjudication and jury rights. 

Although Onesta later withdrew its German suits and argued the appeal should be dismissed without costs, the Federal Circuit’s ruling confirms BMW’s status as the prevailing party.  

Read Fed. Circ. Ends Anti-Suit Injunction Appeal In BMW Case