The case of the day is Bayerische Motoren Werke AG v. Onesta, LLC (W.D. Tex. 2026). It raises a super-interesting question: can you litigate infringement of a US patent in a foreign court? The EU gave its own answer to this question last year, in the context of an EU patent dispute rather than a US patent dispute, in BSH v. Electrolux. In BSH, a German company sued a Swedish company in the Swedish courts for infringement of a European patent. European patents can be validated in European states, and when they are, the European patents become national patents in those states. The patent at issue had been validated in several states, including Sweden. I’ll explain why that is in a moment. Anyway, Electrolux argued that the Swedish court could adjudicate the claims about the Swedish part of the EU patent, but that it had to dismiss the other national parts. That question was referred to the CJEU. On the one hand, the Brussels I bis regulation provides that persons domiciled in EU states are to be sued in the courts of that state. On the other hand, that rule is subject to the other rules of the Brussels I bis regulation, and Brussels I bis states that member states’ courts have exclusive jurisdiction of certain subject matters, regardless of domicile. One of those exceptions is for proceedings involving the validity of a patent, whether invalidity is raised as a claim or as a defense to a claim of infringement. So it’s pretty clear that the Swedish court could not, for example, declare that the German part of the EU patent was invalid as against the whole world. But does that mean that the Swedish court could not decide the claim that the German part of the patent had been infringed? No, the CJEU held, though the court hearing the infringement case could decide to stay the case if a validity case was pending in the courts of the state that had issued the patent. What about third states, non-European states? The court held that Brussels I bis did not limit the jurisdiction of the court of the state where the defendant is domiciled, which means that the Swedish court could, for example, adjudicate the validity of, say, a US patent. But it held that a decision on validity would not “affect the existence or content of that patent in that third State” or “cause the national register of that State to be amended.”

In today’s case, Onesta sued BMW in BMW’s home court, in Germany, for infringement of US patents. This was, of course, just taking up the CJEU’s invitation. BMW then sued Onesta in Texas, seeking declarations that the patent misuse doctrine applied, that the patents had not been infringed, and that the patents were invalid. It also sought an anti-suit injunction.

The judge granted the anti-suit injunction from the bench, with a written decision (the decision I’m covering today) to follow. In between the decision from the bench and the judge’s explanation, the Federal Circuit temporarily stayed the judge’s order.

I have to say I didn’t find the judge’s explanation particularly persuasive. Yes, patent rights are relentlessly territorial. A US patent only regulates the use, sale, importation, etc., of a patented invention in the United States. Yes, patent rights, like rights in real property, are recorded in a public registry. But as long as a foreign judgment does not affect rights in rem in the United States, it’s not clear why it should be wrong for a court in the state of the defendant’s domicile to decide on infringement. Suppose I travel from Massachusetts to New Hampshire and trespass on your land there. Can you come to Massachusetts, where I am domiciled, and litigate the question of who has superior rights to the land in a way that will bind the whole world? No. Can you come to Massachusetts and sue me in damages for trespass? Why not, even though the law of New Hampshire will govern the substance of the dispute and your rights to the land are recorded in a registry of deeds?¹Before you point out that the state creates patent rights, let me point out that at common law, there is no allodial title to land, and that in some states at least (Massachusetts is one), the state sometimes registers land titles rather than simply maintaining a registry of deeds.

The judge seemed to focus most strongly on the lack of discovery in Germany, the lack of a right to trial by jury in Germany, and the risk that a foreign court might decide on validity in a way that affect the rights of third parties. But the differences between US practice and the practice, well, nearly everywhere else concerning pretrial discovery and jury trials in civil cases don’t have any special salience, it seems to me, in patent cases. Yet we wouldn’t say that those differences mean that you shouldn’t be able to sue someone domiciled abroad on any generic civil claim governed by US law. And the CJEU’s decision, while not 100% clear, seems to me to mean that a European court will not issue decisions that purport to declare a US patent invalid, except as between the parties.

I think the right rule is the rule suggested in the ALI’s Principles of the Law of Intellectual Property § 211:

1. Except as provided in subsection (2), a court is competent to adjudicate claims arising under foreign laws pertaining to the subject matter of these Principles. However, with respect to each asserted claim, the court must have subject-matter jurisdiction under its local law and personal jurisdiction …
2. A judgment holding registered rights granted under the laws of another State invalid is effective only to resolve the dispute between or among the parties to the action.

Now having opined that Onesta should be allowed to litigate the issue of infringement in the German court, let me suggest that it might be smarter to litigate them in the US, in part because of the pretrial discovery considerations the judge raised. I’ve brought many 1782 proceedings for use in European patent litigation, and I can tell you that no matter what European lawyers say about our system of pretrial discovery in principle, when they get to use it in order to prove their cases, they can be like kids in a candy store. Indeed, if the case does proceed in Germany, it wouldn’t surprise me if both parties end up seeking evidence in the United States, since by definition the infringement must have occurred here. Also, if the patent owner believes it has a strong validity case, a decision of a US court holding the patent is valid may be more valuable to it in the long run than a decision of a German court awarding it damages in the particular case. (I have no idea if that is true in this particular case, though).

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  Before you point out that the state creates patent rights, let me point out that at common law, there is no allodial title to land, and that in some states at least (Massachusetts is one), the state sometimes registers land titles rather than simply maintaining a registry of deeds.