16 December 2025
US District Court for the Western District of Texas WACO Division
BMW v Onesta
Order granting ex parte temporary restraining order
The Court
For completeness, I copy the text of the decision below:
“The Court has considered the submissions presented in connection with Plaintiff Bayerische Motoren Werke Aktiengesellschaft’s (“BMW”) Motion for ex parte Temporary Restraining Order and Anti-Suit Injunction. Having considered the matter, the Court finds good cause exists to temporarily restrain Defendants as requested in BMW’s motion. The Court finds that the status quo should be maintained pending the Court’s evaluation of, and ruling on, an anti-suit injunction. The Court finds a substantial risk of irreparable harm to BMW, and to the jurisdiction of this Court, if Onesta IP, LLC (“Onesta”) were to attempt to enforce or pursue an anti-anti-suit injunction (“AASI”) against BMW in Munich Regional Court I (“the Munich court”). Given Onesta’s active pursuit of litigation in the Munich court, there is a substantial likelihood that Onesta would pursue an AASI against BMW.
Additionally, the Order is issued without notice because the emergency relief BMW requests is highly time sensitive given the arguments, declarations, and certifications offered by BMW pursuant to Fed. R. Civ. P. 65(b)(1). Specifically, BMW has shown a substantial likelihood that Onesta would pursue an AASI against BMW, permanently restricting this Court’s ability to consider whether their request for ASI is meritorious.
In contrast, the harm to Onesta of maintaining the status quo is negligible. The Court further finds based on BMW’s arguments, declarations, and certifications offered pursuant to Fed. R. Civ. P. 65(b)(1), that there is good cause justifying entry of this temporary restraining order on an ex parte basis to avoid rending fruitless the further prosecution of this action.
Further, BMW, or its authorized agents, are ORDERED to promptly provide actual notice, by serving, in accordance with the Federal Rules of Civil Procedures, a copy of this Order and all papers upon which this Order is based to Onesta and transmit via email a copy of this Order and all papers upon which this Order is based to at least one of Onesta’s representatives in the Munich Regional Court I with whom BMW or its representatives have previously been in contact.
IT IS FURTHER ORDERED THAT, effective immediately, Onesta, and all of their affiliates, officers, directors, shareholders, and employees, or those in active concert with them, shall refrain from any of the following acts until further order of this Court:
1. Make any request, claim, application, or motion further pursuing or enforcing an injunction from a foreign court—including but not limited to the Munich Regional Court I—which would prohibit, deter, impose monetary fines on, or otherwise limit in any way BMW’s, and all of its corporate parents, subsidiaries, and affiliates, ability to fully and completely prosecute this action, request and enforce relief, or which would impair this Court’s ability to adjudicate any and all matters in this lawsuit;
2. Make any request, claim, application, or motion further pursuing or enforcing an injunction from a foreign court—including but not limited to the Munich Regional Court I—which would prohibit or otherwise limit in any way BMW’s, and all of its corporate parents, subsidiaries, and affiliates, ability to make, use, offer to sell, or sell within the United States or import into the United States any vehicle, product, or other item on the basis of Onesta’s United States patents.
IT IS FURTHER ORDERED THAT Defendants shall respond to BMW’s request for an anti-suit injunction enjoining Defendants from such activities as is described in the paragraphs above and the additional relief requested to enjoin Defendant’s from pursuing any action for infringement of United States patents in a foreign jurisdiction against BMW, and all of its corporate parents, subsidiaries, and affiliates. The Court establishes the following briefing schedule for consideration of BMW’s anti-suit injunction request:
1. The Court will consider BMW’s motion for temporary restraining order as also constituting its motion for an anti-suit injunction.
2. Defendant shall have until December 23, 2026 to file with this Court and serve on BMW’s counsel any Opposition to the Continuation of the Temporary Restraining Order or Conversion to Anti-Suit Injunction. Defendant’s Opposition will be limited to 20 pages, exclusive of evidence.
3. BMW will have until December 29, 2026 to serve a Reply. BMW’s Reply will be limited to 10 pages, exclusive of evidence.
Because Onesta cannot conceivably suffer harm by continuing to be subject to the legitimate jurisdiction of this court and by maintaining the status quo, the Court finds that the proper amount of security for this TRO under Rule 65(c) is Zero United States Dollars ($0.00).
This Order shall expire on its own terms on December 30, 2025, unless further extended by Order of this Court.
For good cause shown and upon written application to the Court, this Order may be extended for a longer period determined by the Court.”
Comment
- After the decision by the Court of Justice of the European Union (“CJEU”) in BSH Hausgeräte v Electrolux, the Regional Court in Munich is trying to make a name for itself by promoting their grant of injunctions for foreign patents including non-EP patents such as US patents, while applying national German procedural law.
- I understand the Regional Court’s judges consider that such injunction would be granted, unless there would be a high likelihood that the (foreign) patent would be invalid.
- This would mean that the highly criticized national bifurcation system would also be applied to alleged infringements of foreign (including US) patents. This system means that the infringement court will only suspend an infringement case if there is a high likelihood that the patent is invalid.
- For a non-practicing entity, this is the ideal forum to coerce high license fees and/or damage payments on the basis of weak/shaky patents, especially as the proportionality rule of Art. 3 (2) of the Enforcement Directive remains in practice a virtually dead letter in German national courts.
- It is true that some efforts have been undertaken in Germany to try to avoid misuse of this system (such as an early preliminary opinion on validity from the Bundespatentgericht, and in the first cross-border preliminary injunction (“PI”) decision of the Regional Court, there was already a decision of the Bundespatentgericht upholding the German part of the EP). However, the Regional Court appears to promote obtaining a quick PI also under US patents, which the UPC cannot provide because in the UPC only litigate EP patents can be litigated and the UPC is “more difficult” about validity in PI proceedings. Moreover, the UPC’s system is de facto not bifurcated, so that it is difficult to obtain PIs on the basis of patents which may be invalid.
- As such, the idea that a patentee does not have to go to numerous courts in order to enforce its patent is (of course) to be applauded, and the UPC is an excellent step in that direction. However, what the Regional Court of Munich does is what I would qualify as judicial imperialism. It also shows a “bei uns ist alles besser” attitude which attitude leads to ressentiment and reactions.
- It is one thing to start adjudicating US patents, but this judicial imperialism goes too far if you also grants antisuit injunctions forbidding a company to ask relief (review) in the courts of the country which grants the patent.
- The reaction of judge Albright who granted the temporary restraining order which I reproduced hereabove is then also be expected. Of course, BMW should be able to go to a US Court to be able to challenge what is happening in Germany.
- It is one thing to say that as the defendant is a German company that you can also deal with the infringement and validity of US patents (and not refuse jurisdiction on the basis of international comity), but it is an entirely different thing to grant an antisuit injunction forbidding a challenge of what is happening in Germany in the country which granted the patent.
- There is nothing in the BSH Hausgeräte v Electrolux decision which obliges a German court to hear a US infringement case, let alone that that judgment can be read as advocating antisuit injunctions.
- I note that US courts do not feel competent to deal with the infringement and validity of foreign patents.
- In my opinion, I do not think that EU courts should deal with non-European patents, certainly not with patents of countries which do not interfere with foreign patents, except maybe in situations where it is virtually impossible to enforce patents in a certain country and if such country is a member of TRIPS.
- With respect to EP patents for which the national law with respect to infringement and validity in principle is the same there is no problem with crossborder decisions with respect to EU countries which are as to competence all bound to the Brussels Regulation.
- With respect to EP countries outside the EU there is less reason to restraint than with respect to non EP countries. For reasons of comity (but also to avoid antisuit injunctions and further complications) I think that the EU courts (national courts and the UPC) should only assume jurisdiction for other EP countries with respect to companies of which the parent company is established in the EU. As an example: A company like BMW which is established in Germany could be sued in the UPC together with its subsidiaries in the UK and Turkey for infringement of an EP patent in these countries.
I note that the above is all different from the situation in which there is a contractual (license) dispute about (standard essential) patents. Normally in such situation there will be a choice of forum in case of an agreement (or a promise to license) for several (or all) patented countries. If there is no such choice of forum them in case of a dispute each party can start proceedings in a court which has jurisdiction. In general other courts will respect and even enforce such judgments. This will be the case not only between countries which are bound by a Treaty (or the Brussels Regulation) which obliges such recognition and execution but also by other countries (in the form of a new judgment of such country). In general this will only be different if the way proceedings have been carried out or the result of such proceedings violate the public order in the country where recognition and enforcement is sought.
– All comments above are Prof. Hoyng‘s personal opinions –
For all decisions of the UPC’s Court of Appeal from the start in 2023 until 1 January 2025, Willem Hoyng’s more comprehensive summaries and comments are bundled in the book “Case law – Court of Appeal of the UPC 2023-2024”.