Jurisdictional Crossroads: The BSH Ruling and Judge Albright’s Anti-Suit Injunction in BMW v. Onesta

Judge Alan D. Albright of the United States District Court for the Western District of Texas says that U.S. patents must be litigated in U.S. courts, signaling an emerging tension between EU jurisdictional reach and U.S. legal views on the proper forum for U.S. patent disputes.

The BSH Decision and the Scope of EU Courts’ Jurisdiction

The Court of Justice of the European Union (CJEU), the European Union’s (EU’s) highest court for interpreting EU-wide law, has long shaped how and where intellectual property disputes may be litigated across the EU’s Member States. Until recently, however, the scope of EU national courts’ authority over non-EU patents remained unsettled. Then, in February 2025, the CJEU issued a landmark decision—BSH Hausgeräte GmbH v. Electrolux AB—which clarified when EU courts may hear infringement and validity disputes involving non-EU patents. C-339/22, BSH Hausgeräte GmbH v. Electrolux AB, ECLI:EU:C:2025:108 (Feb. 25, 2025) https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=CELEX:62022CJ0339.

BSH involved European patent EP 1434512, which was granted by the European Patent Office (EPO) and validated in Germany, Greece, Spain, France, Italy, the Netherlands, Austria, Sweden, the U.K., and Türkiye. Id. at ¶ 11. BSH asserted EP 1434512 against Electrolux in Sweden, seeking to stop Electrolux from using the patented invention in all of these nations. Id. at ¶ 12. Electrolux contested both validity and infringement, arguing the Swedish court lacked jurisdiction over infringement claims of the EP 1434512 patents validated outside of Sweden. Id. at ¶¶ 13–14.

Resolving the jurisdictional dispute required assessing the scope of Article 4(1) of the Brussels I bis Regulation. Article 4(1), applicable to EU member states, allows a national court in an EU member state to hear any case against a defendant domiciled in that EU member state. In other words, Article 4(1) operates like “at home” personal jurisdiction under U.S. law, which allows courts of states where a corporation is at home to hear any case involving that corporation as a defendant, even for conduct occurring elsewhere.

With respect to Article 4(1), the CJEU held that a court in the EU member state of the defendant’s domicile can decide both infringement and validity of non-EU members’ foreign patents. However, any validity ruling would only bind the parties in the proceeding, meaning the decision would not alter the patent’s registration or validity in the foreign jurisdiction. Id. at ¶ 74. The BSH ruling thus opened the door to parties trying to litigate U.S. patents in EU courts where the defendant is domiciled.

The Test Case: Onesta v. BMW

Following BSH, Onesta, LLC, a U.S. non-practicing entity (NPE), sued BMW for infringing one EP patent and two U.S. patents in the Munich Regional Court I in Germany. In response, BMW moved for an anti-suit injunction (ASI) before Judge Albright in the Western District of Texas to prevent Onesta from pursuing its claim in Germany. Order Granting Anti-Suit Injunction, Bayerische Motoren Werke Aktiengesellschaft (BMW) v. Onesta IP, LLC, No. 6:25-cv-00581, 2026 WL 474871 (W.D. Tex. Feb. 13, 2026).

To determine whether an ASI should be granted, Judge Albright applied the Fifth Circuit’s Unterweser framework, which considers whether:

1. 1. 1. The parties are the same and the U.S. action will dispose of the relevant issues in the foreign litigation;
      2. At least one harm from the foreign litigation (Unterweser threats) can be identified;
      3. The Unterweser threats outweigh the need to defer to international comity.

Id. at *2.

Judge Albright first issued a temporary restraining order and then, on February 13, 2025, issued a written order granting BMW’s motion for an ASI. Id. at *1.

First, Judge Albright observed that the parties to the U.S. and Munich proceedings were identical, and that resolution of the U.S. action would necessarily dispose of the issues being litigated in Munich. Id. at *2.

Second, Judge Albright identified two interrelated harms: frustration of U.S. policy and prejudice to BMW. Id. The Munich action, in his view, undermined the principle that validity and infringement disputes over U.S. patents should be adjudicated exclusively by U.S. courts. Id. at *3. He found that the Paris Convention for the Protection of Industrial Property, of which both Germany and the U.S. are signatories, affirms the independence of national patent systems and preserves jurisdictional authority for each member state. Id. Judge Albright further found that BMW would suffer prejudice if forced to litigate in Germany, as it would be deprived of procedural protections available only under U.S. law, including fact discovery, validity determinations, and the right to trial by jury. Id.

Addressing an interesting argument, Judge Albright rejected Onesta’s analogy to copyright law, which the Ninth Circuit held can be litigated in foreign courts. Id. at *4. Noting the complex examination procedures, timelines, and substantive standards governing U.S. patents, Judge Albright made clear that U.S. courts are best suited to handle U.S. patent disputes. Id.

Third, Judge Albright determined that international comity did not weigh against the issuance of the injunction. Id. at *5. Because the dispute was purely private and did not implicate matters of public international concern, the injunction would not offend the sovereignty of Germany or unduly interfere with its judicial processes. Id.

Implications and Takeaways

Although granting an ASI against Onesta set a precedent in how U.S. courts may handle attempts to assert U.S. patents abroad, Judge Albright’s ruling does not alter the CJEU decision in BSH. The Western District of Texas forced Onesta to drop the suit in Munich partly because the court possessed personal jurisdiction over Onesta in Texas. But are there mechanisms to stop a foreign company that owns U.S. patents from initiating litigation in an overseas forum if in personam personal jurisdiction over the foreign company cannot be established in a U.S. court? If not, then the U.S. may not have “exclusive jurisdiction” over infringement disputes involving U.S. patents.

While BMW’s approach suggests than an ASI may be the preferred tool to stop foreign litigation involving U.S. patents, the U.S. judicial response remains uncertain and is likely to prompt further development. As Judge Albright noted, the law surrounding ASIs is circuit specific. A different U.S. Circuit may not issue an ASI.

Under the current landscape, we think that the following strategies will emerge. Defendants facing foreign litigation of U.S. patents should seek declaratory relief and ASIs by filing at the Fifth Circuit, if there is jurisdiction over the entity commencing the foreign suit, or in the alternative, other circuits whose legal standards would lead to a similar result. Conversely, patent owners searching for a second crack at asserting U.S. patents abroad may consider incorporating in a state whose home circuit is more hesitant to issue ASIs such that the foreign litigation can proceed.

Ultimately, this emerging intersection between the CJEU’s BSH decision and the implications of asserting U.S. patents abroad represents a novel development in patent litigation, and we will be closely monitoring how future cases navigate these jurisdictional boundaries.