This past February, the Court of Justice of the European Union (CJEU) issued a landmark decision in BSH Hausgeräte v. Electrolux that significantly expanded the reach of European courts. BSH established that all EU courts have the power to hear infringement claims over non-EU patents—and, for national courts in EU states, the ability to decide infringement of patents issued outside Europe altogether. So far, German courts and the Unified Patent Court (UPC) have only allowed claims under BSH that include non-EU patents issued within Europe, but now one NPE has attempted to push the envelope: Early last month, US-based plaintiff Onesta IP LLC filed cases asserting two US patents in the Munich I Regional Court of Germany against automaker BMW.
BSH Upends the Status Quo for Cross-Border Infringement Litigation
While cross-border infringement actions were already possible in EU member state courts prior to BSH, a key jurisdictional rule was previously read as undercutting that power as a practical matter: Under Article 24(4) of the Recast Brussels Regulation (the framework that provides unified rules for international jurisdiction within the EU), when an EU member state court (i.e., an EU national court or the UPC) was seized with an infringement action over a patent issued in another member state, it had to stay the case when the validity of the foreign patent was challenged. Thus, defendants could prevent cross-border infringement claims from proceeding by filing a defensive validity challenge.
However, in BSH, the CJEU not only confirmed that Article 24(4) does not prevent member courts from addressing infringement, it also held that those courts "may, where appropriate, stay the proceedings" pending the outcome of a validity challenge in another EU member state when there is a "reasonable, non-negligible possibility" that the challenge will succeed. Thus, rather than requiring a stay, the opinion gives the court some leeway based on the seriousness of the invalidity claim. Additionally, the CJEU held that EU national courts and the UPC may rule on the validity of patents in non-EU countries not subject to special rules similar to Article 24(4). That said, those validity decisions are merely inter partes (i.e., they only impact the parties to the case at hand) and may not result in the removal of a patent from the registry of the country of issuance.
The upshot of BSH is that national courts in EU countries, as well as the UPC, may now award damages and/or impose injunctions for the infringement of non-EU patents as long as the defendant is domiciled in the EU (for national court litigation) or in one of the 18 countries participating in the UPC (for UPC litigation).
The UPC has since applied BSH to decide claims of non-EU infringement. Most notably, in mid-July, in Fujifilm v. Kodak, the court's Mannheim Local Division issued the first-ever UPC injunction covering infringement in the UK (which left the EU following Brexit); and in August 14, the Hamburg Local Division took BSH a step further in Dyson v. Dreame, issuing the UPC's first-ever injunction covering Spain (an EU nation that did not join the UPC). German courts have also applied BSH, including a recent ruling by the Munich I Regional Court that imposed a preliminary injunction covering Germany and 22 other European countries, including non-EU states, in litigation filed by Bayer and Regeneron against Formycon.
Onesta IP Tests the Bounds of BSH
That said, it appears that no EU court has previously addressed claims asserting the infringement of US patents. Onesta IP's German cases against BMW could change this.
On October 9, the NPE filed three cases against the automaker in the Munich I Regional Court, all over semiconductor patents originating with AMD: one asserting a European bundle patent (EP 2 473 920, case number 21 O 12768/25) and two each asserting a single US patent (8,443,209, 21 O 13057/25; and 8,854,381, 21 O 13056/25). IP Frayreports that Onesta IP's complaints provide several reasons why it has asserted all three patents in Germany, rather than filing US cases for the US patents: It "expects a 'swift, thorough, and high-quality decision from a specialized single forum'"; the German action would "avoid[] 'costly and lengthy' U.S. proceedings"; the Munich I Regional Court is a "globally recognized specialist court"; and the court should issue a decision "quickly, with a 'reasonable' cost-risk".
Onesta IP also reportedly argues that Germany is the most "preferable" venue for BMW (as paraphrased by IP Fray): beyond the cost advantages of litigating in a single proceeding, the plaintiff apparently highlights the fact that BMW's registered office is in Germany, and that it also has "significant assets in Germany, which may be easier to access for enforcement purposes" (also as paraphrased by IP Fray).
That said, as a matter of apparent first impression, significant open questions about how such cases might play out remain unanswered, potentially adding both complexity and cost—including the extent to which the German court will apply US law for both liability and remedies. The latter presents a particularly stark contrast in approaches: While permanent injunctions are the default form of relief in Germany, the US Supreme Court's 2006 eBay v. MercExchange decision requires US courts to apply a four-factor equitable test when deciding requests for permanent injunctions—including one factor under which a party must show that it would suffer "irreparable harm" without an injunction, a threshold that NPEs like Onesta IP have historically struggled to overcome. It is not clear how the Munich court will approach eBay.
The interplay between German and US procedural law also presents uncertainty, in particular with respect to procuring evidence: almost no pretrial discovery is available in German patent cases, but defendants (or "interested parties") in non-US cases can ask US courts to order the production of nonprivileged, relevant information for use in the foreign proceeding under 28 USC § 1782 (a procedure often called Section 1782 discovery). Still more complexity hangs over the question of how a German court would decide whether to stay the case in the event that the defendant credibly challenges the US patent's validity in the US, including district court motions and actions before the Patent Trial and Appeal Board (PTAB), based on its assessment of the challenger's likelihood of success (as allowed under BSH)—a matter that would require the German court to not only apply US law on patentability and patent eligibility, but also contend with the different evidentiary standards used to establish invalidity in district court vs. the PTAB.
More broadly, some attorneys (see, e.g., here) have questioned whether US courts would give effect to European decisions on the infringement of US patents, and the extent to which US courts would respect such rulings as res judicata.
Onesta IP's German cases are the plaintiff's first foray outside the US, where it filed its first litigation earlier this year. On April 17, it filed a pair of Western District of Texas complaints: one against Qualcomm, Nothing, and OnePlus (1:25-cv-00587), targeting Qualcomm over the provision of certain Snapdragon-series processors, with Nothing and OnePlus targeted over smartphones that incorporate the accused processors; and the other against NVIDIA (1:25-cv-00586), targeted over certain "integrated circuits, circuit board assemblies, graphics cards, and computers". An ITC action filed the day after (337-TA-3823) names all four district court defendants as proposed respondents. In June, District Judge Alan D. Albright granted the plaintiff's uncontested motions to stay the district court cases pending the final determination of the ITC action, including any appeals.
The '389 patent asserted in the German suit against BMW was initially asserted in all three of those US cases, in which a further five patents (7,717,350; 9,116,809; 9,519,943; 11,741,019; 11,841,803) are also collectively at issue. However, on September 23, 2025, Onesta IP filed a motion to terminate the ITC investigation as to all asserted claims of the '389 patent, which Administrative Law Judge Monica Bhattacharyya granted two days later. The motion cited only a desire to "streamline the case and to conserve the resources of the Administrative Law Judge, the private parties, and the Commission Investigative Staff". Earlier in September, the Commission also granted Onesta IP's late-August motion to drop a subset of the asserted claims from three other patents: claims 13 and 14 of the '350 patent, claims 10 and 13 of the '943 patent, and claims 15 and 21 of the '809 patent.
Onesta IP was formed in Delaware on August 20, 2024, with little information concerning its management or personnel available in public records. However, in assignment records, it provides a residential address in Wayne, Pennsylvania owned by the Marino Reynolds Family Trust. On social media, Bill Marino—a former executive at Altitude Capital Partners who was the founder and CEO for the patent assertion entity Pragmatus, LLC, among other prior patent-centric roles, and is apparently married to an Elizabeth Reynolds—describes himself as a founder and managing director of Onesta IP, stating that he is "the controlling member of Onesta and chiefly responsible for the IP and licensing strategy of the company". Marino also lists another current role as part-time CEO, since January 2020, of Neo Wireless LLC (f/k/a CFIP NCF LLC), an entity associated with Fortress Investment Group LLC that (like Onesta IP) is also is described as a Delaware entity based in Wayne, Pennsylvania. Additionally, Marino lists another part-time CEO role for another Fortress NPE, Constellation Designs, LLC, in which capacity he has served since April 2019.
Another IP executive, David Loo, discloses on social media that he has served as a director of Onesta IP since 2024, stating that he is "responsible for IP and licensing strategy of the company". Loo's other publicly listed roles overlap extensively with Marino's: In part, Loo also lists himself as having served as the part-time CEO of Neo Wireless since January 2020, suggesting that he and Marino share that role. Loo further describes himself as the "Chief Operating Officer and General Counsel" for Constellation Designs, like Marino stating that this role began in April 2019; and a role as "Vice President, Patent Acquisition" for Pragmatus—albeit for a shorter period than Marino, from June 2011 to January 2016. After leaving Pragmatus, Loo reports having founded Vector2LLC, for which he performs "patent prosecution and technical expert services".
For more on the Onesta IP campaign, see "Onesta IP Launches Litigation over Recently Acquired Portfolio in Both District Court and Before the ITC" (April 2025).
A deep dive on the BSH decision can be found at "CJEU's Long-Arm Jurisdiction Ruling Could Shake Up Enforcement Strategies in Europe" (March 2025), while coverage of the UPC's application of BSH can be found at "UPC Issues First-Ever UK Injunction" (June 2025) and "UPC Further Expands Reach with First Injunction Covering Spain" (August 2025). More on the UPC, including NPE activity and notable decisions on fair, reasonable, and nondiscriminatory (FRAND) licensing issues, is also available in RPX's third-quarter review.
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