Finnegan secures a sweeping multi-forum victory for BMW AG against non-practice entity Onesta IP, LLC

Finnegan successfully represented Bayerische Motoren Werke Aktiengesellschaft (“BMW AG”) in a cross-border patent dispute against Onesta IP, LLC (“Onesta”), a Delaware non-practicing entity that asserted two U.S. patents against BMW AG in the Munich Regional Court I in Germany, alongside a European patent, seeking to enjoin BMW AG's vehicles and adjudicate U.S. patent rights in a foreign forum. The dispute spanned multiple U.S. and German proceedings and resulted in repeated victories for BMW AG.

In response to Onesta’s unprecedented assertion of U.S. patents abroad, Finnegan works closely with BMW AG and its German co-counsel to act swiftly and decisively, filing a declaratory judgment action in the Western District of Texas seeking declaratory judgements of non-infringement, invalidity, and patent misuse, while simultaneously moving for emergency injunctive relief. Judge Albright granted BMW AG's request for a temporary restraining order preventing Onesta from pursuing responsive injunctive relief in Germany against BMW AG’s U.S. declaratory judgment action. Judge Albright then issued a broad anti-suit injunction requiring Onesta to immediately terminate its German infringement actions asserting the U.S. patents, finding that Onesta's foreign litigation threatened the United States' policy interest in adjudicating its own patents and deprived BMW AG of critical defendant protections available in U.S. courts, including fact discovery, invalidity consideration with erga omnes effect, and the right to a jury trial. 

Then, BMW AG achieved a complete victory at the United States Court of Appeals for the Federal Circuit. Onesta appealed Judge Albright's anti-suit injunction then terminated the German actions. In response, BMW AG moved to dismiss the appeal as moot. Onesta conceded that the appeal should be dismissed but sought to avoid costs and prevailing-party status for BMW AG. The Federal Circuit sided with BMW AG in full, granting BMW AG's motion to dismiss, expressly awarding costs to BMW AG, and noting that Onesta had unnecessarily prolonged the proceedings even after disclosing the agreement that mooted its appeal. The dismissal left Judge Albright's anti-suit injunction fully intact as a deterrent against improper attempts to assert U.S. patents in foreign courts.

Following these decisive rulings, Onesta issued a sweeping, irrevocable covenant not to sue, under which Onesta agreed never to assert U.S. Patent Nos. 8,854,381 and 8,443,209 against BMW AG or any of its successors, customers, affiliates, manufacturers, distributors, or licensees, anywhere in the world, for any past, present, or future vehicles, products, or components. BMW AG then filed a notice of voluntary dismissal, bringing the WDTX declaratory judgment action to a close on terms entirely favorable to BMW AG and achieving its central objective of eliminating all present and future exposure under the asserted patents.

Together, these results delivered a comprehensive and unequivocal victory for BMW AG, including: 

•    judicial confirmation that U.S. patents must be adjudicated exclusively in U.S. courts under U.S. law;
•    a successful temporary restraining order preventing Onesta from pursuing injunctive relief in Germany; 
•    a successful anti-suit injunction requiring Onesta to terminate its German infringement actions involving the asserted U.S. patents; 
•    dismissal of the related appellate challenges, leaving Judge Albright’s anti-suit injunction fully intact, confirming BMW AG as the prevailing party, and awarding costs to BMW AG; and 
•    a global covenant not to sue, providing BMW AG with complete and permanent protection against any future assertions under the asserted patents.