Q&A: How an NPE Is Testing the Limits of BSH v. Electrolux

A US-based non-practising entity is the first known party to apply the long-arm jurisdiction laid down by BSH v. Electrolux in Europe. BMW’s lead counsel at Finnegan brings WIPR up to speed.

The dispute between luxury automaker BMW and a non-practising entity (NPE) over in-car technology has attracted attention recently for its unusual cross-border dimension.

Onesta, based in the US and owner of patents covering processor technology, originally sued BMW at the Munich I Regional Court, Germany with three lawsuits—two of which allege infringement of U.S. patents. The NPE claimed infringement of its patents directed to processor unit tech for car head units (which controls devices for a vehicle's audio and infotainment system).

In asserting US patents in Europe, Onesta is possibly the first-known example of a party applying the ‘long-arm jurisdiction’ rules laid down in BSH v. Electrolux. In that ruling, the Court of Justice of the European Union (CJEU) enables non-US parties to “reap the known benefits of European courts, such as seizures, injunctions, and shorter litigations culminating in quicker determinations”. But, in response to Onesta’s lawsuits, BMW claimed that the assertion of two US patents in foreign litigation was improper, and so BMW sought a declaratory judgment of the two U.S. patents in the action in Munich.

The carmaker also sought an emergency Temporary Restraining Order to prevent Onesta from seeking an anti-anti-suit injunction (AASI) in Germany, which would allow Onesta to block BMW from litigating the two US patents in the US; and a preliminary injunction to prohibit Onesta from pursuing U.S. patent claims in Germany.

Judge Alan Albright, renowned for handling huge numbers of cases at the major patent court in Texas, recently granted this request. But, after Onesta’s prompt appeal, the Federal Circuit has temporarily stayed the injunction.

So what’s next? Finnegan partner Lionel Lavenue, lead outside counsel for BMW, brings WIPR up to speed, including implications and next steps.

WIPR: Can you explain how influential BSH vs Electrolux is in this dispute?
Lionel Lavenue: The CJEU’s decision in BSH v Electrolux is central because it is the decision Onesta cites as the legal basis for pursuing patent claims outside the patent’s home system.

In BSH, the CJEU addressed jurisdiction questions in a European setting involving a European bundle patent validated in EPC contracting states. It did not squarely address U.S. patents or authorise foreign courts to adjudicate U.S. patent rights affecting U.S. markets.

What makes this dispute unusual is that Onesta is attempting to apply the BSH framework in a way that reaches beyond European bundle patents and into two US patents asserted in Munich.

That move raises the cross-border issues that will continue to shape the case: where US patent claims should be adjudicated, how to avoid parallel proceedings and inconsistent outcomes across jurisdictions, and how to maintain clear territorial boundaries for US patent enforcement.

Can you summarize the three patents asserted by Onesta?
LL: On October 9, 2025, Onesta IP LLC filed three parallel patent infringement actions in the Munich Regional Court I against Bayerische Motoren Werke Aktiengesellschaft (BMW). Two of those actions assert U.S. Patent No. 8,854,381 B2 and US Patent No. 8,443,209 B2; and the third action asserts a related European patent, EP 2,473,920 B1.

Each Munich action corresponds to a separate docket number. The US Patent No. 8,854,381 B2 action is Case No. 21 O 13056/25; the US Patent No. 8,443,209 B2 action is Case No. 21 O 13057/25; and the EP 2,473,920 B1 action is Case No. 21 O 12768/25.

The asserted patents generally relate to GPU and system-on-chip (SoC) processing features, including asynchronous task dispatch and performance-sensitive resource control. Onesta’s infringement theory is tied to certain BMW vehicles that incorporate Qualcomm Snapdragon SoC components.

How did you and the court respond to Onesta's lawsuits?
LL: Based on the view that US patent rights should be adjudicated in US courts, BMW filed a declaratory judgment action in the US District Court for the Western District of Texas on December 15, 2025 (Case No. 6:25-cv-00581-ADA), seeking declarations of non-infringement, invalidity, and patent misuse as to the two US patents, and requesting emergency injunctive relief aimed at preventing adjudication of those US patent rights in a foreign court.

Shortly after filing, the district court issued a Temporary Restraining Order (TRO), and the matter proceeded on an expedited schedule, including a hearing on January 13, 2026.

Following that hearing, Judge Alan Albright issued an anti-suit injunction (ASI) directing Onesta to terminate the German proceedings to the extent they assert US patents. The court’s oral directive included an instruction to “terminate now” the German proceedings as to the US patent claims.

The Munich proceedings asserting the US patents are now subject to the ASI. BMW has also filed an enforcement motion seeking an order to show cause why Onesta should not be held in civil contempt for failing to promptly terminate the US patent portions of the Munich cases and for failing to provide confirmation and proof of compliance.

On the appellate side, the Federal Circuit denied Onesta’s motion for an emergency stay, which it filed shortly after the January 13 hearing.

Onesta then filed a renewed emergency motion to stay on January 16, 2026, and BMW filed its opposition, explaining why Onesta cannot satisfy the Rule 8 stay factors and why immediate enforcement remains necessary to prevent concrete prejudice to BMW from the ongoing Munich proceedings.

Now that Onesta is barred from progressing its litigation in Europe, what is next for the U.S. lawsuits?
LL: The ASI preserves the proper forum for adjudicating US patent rights. The immediate next step is enforcement of the injunction and confirmation of compliance.

BMW has pursued enforcement relief, seeking an order requiring termination of the German proceedings that assert the U.S. patents and requesting an order to show cause why Onesta should not be held in civil contempt for alleged noncompliance, including the failure to promptly terminate and provide proof of compliance.

Onesta has continued to pursue emergency stay relief at the Court of Appeals for the Federal Circuit. BMW has opposed those requests, and the appellate court has been addressing the stay filings on an expedited basis.

Once the German proceedings asserting the US patents are terminated as ordered, the merits of the two US patents will proceed in the Western District of Texas through BMW’s declaratory judgment action, under US procedures and with U.S. adjudication of U.S. patent rights.

What is the particular business impact of this dispute and latest outcome?
LL: From a business-impact perspective, the key risk is commercial disruption from cross-border remedies tied to US patents. A foreign court process that advances toward injunctive-style relief premised on US patents can create uncertainty around US market access, including potential practical constraints at the US border for import-related activity and downstream disruption to supply chains, distribution, and customer delivery timelines.

The latest outcome—Judge Albright’s ASI and the related enforcement motion activity—mitigates that risk by keeping the adjudication and remedies for US patent rights anchored to U.S. proceedings and standards, rather than allowing US patent claims to be litigated to outcome abroad.

At a practical level, that risk tracks the way the allegations are framed. Onesta alleges infringement tied to vehicle electronics and computing components in vehicles manufactured abroad and exported into the U.S.

In that posture, the asserted U.S. patent claims are presented as reaching conduct associated with products entering the U.S. market, so any foreign injunctive-style relief issued by a foreign court premised on U.S. patents could translate into immediate commercial uncertainty for cross-border flows, including imports into the United States, and knock-on effects for distribution and delivery timelines.

How has the rise of NPEs affected your practice?
We have seen NPEs become more sophisticated, including by using parallel proceedings and cross-border pressure tactics to try to accelerate leverage. The response for practising entities is to move quickly, secure the correct forum, and ensure that core disputes are resolved under the legal system designed to govern the rights at issue. That is exactly what BMW did here.