NPE asserts US patents against BMW in Munich

BMW faces three infringement suits from Onesta at the Regional Court of Munich concerning processor technology for head units in cars. Two of the lawsuits are based on US patents. The NPE and law firm Peterreins Schley are thus entering new territory for infringement actions in Europe.

Head units control car infotainment systems. US based NPE Onesta claims BMW is infringing its patents on processor technology in several models, including the BMW i4. The company is seeking injunctive relief and damages from the Munich Regional Court (case IDs: 21 O 12768/25, 21 O 13056/25 and 21 O 13057/25). Onesta filed the lawsuits in October.

The US company primarily targets models that BMW produces at its main plant in Munich. The court, under presiding judge Georg Werner, must decide whether to prohibit the Bavarian car manufacturer from installing and selling head units that infringe the semiconductor patents EP 2 473 920, US 8,854,381 and US 8,443,209. Advanced Micro Devices originally applied for these patents, which Onesta now owns.

According to JUVE Patent-Information, this marks the first time a patent infringement suit in Germany targets not only domestic sales but also effectively targets exports to the USA. This is because the Munich judges must also rule on the infringement of two US patents.

Cross-Atlantic claim

The ECJ’s decision in BSH Hausgeräte v Electrolux (C-339/22) makes this possible. According to JUVE Patent research, Onesta’s claims represent the first infringement case following the CJEU landmark ruling to be heard before a German regional court involving US patents. JUVE Patent is not aware whether a US patent has already been the subject of an infringement action at a German court prior the CJEU ruling.

In the proceedings, the NPE argues that since BMW is based in Munich and builds models such as the BMW i4 there for export to the USA with the allegedly infringing head units, the protection of the two patents takes effect when crossing the US border. Because BMW thus makes use of the protected technology, the company should not be allowed to manufacture such models for US export.

Onesta cites Article 63(1) Brussels Ia Regulation, under which the Munich Regional Court is BMW’s home forum. According to German case law, the court would have jurisdiction not only for national infringement claims but also those involving foreign IP rights. However, if the Regional Court follows the US company’s reasoning, it would need to apply US law concerning the two US patents, per Article 8(1) Rome II Regulation.

Following BSH vs Electrolux

This approach takes advantage of new CJEU case law, applicable since spring 2025. The UPC quickly adopted this in its first decisions, extending jurisdiction to non-UPC countries. However, with the UK and Spain, it has thus far remained within Europe.

In a press release, Onesta states it expects “a swift, thorough, and high-quality decision from a specialized single forum, avoiding parallel proceedings in multiple jurisdictions”. It further says that “this, in a different sense, unified approach could be understood to also benefit defendants since they can respond before their home court (as in the case of BMW AG, the Munich Regional Court I)”.

Whether this single-jurisdiction strategy succeeds largely depends on BMW’s response. A nullity action against EP 920 at the German Federal Patent Court is expected. It remains unclear whether BMW will challenge the validity of the two US patents in the USA or possibly also in Germany.