Waco Judge Enjoins Litigation of U.S. Patents in Germany

 

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Judge Alan D Albright (Western District of Texas) loves patent cases. Before his appointment as a district judge in 2018, he was a patent litigator. After his appointment, he “went on a media blitz, letting everyone know that his court would welcome patent litigation.” As detailed here, Judge Albright adopted standing orders that promised speedy decisions and limited discovery, and he issued opinions favoring patent holders. Judge Albright is the only judge in the Waco division of the Western District, so plaintiffs filing there could be certain that he would hear their cases. Patent cases filed in the Waco Division skyrocketed to more than 700 a year in 2020 and 2021.

Soon, however, the Federal Circuit began to rebuke Judge Albright for not transferring cases to other districts. Senators complained to Chief Justice Roberts. And in 2022, the Western District issued an order directing that patent cases filed there (but only patent cases) be randomly assigned to the Western District’s twelve judges. By 2025, Judge Albright’s patent caseload had fallen to just over 100.

Earlier this year, Judge Albright saw off a somewhat different challenge to his jurisdiction. In Bayerische Motoren Werke Aktiengesellschaft v. Onesta, LLC, he granted an antisuit injunction prohibiting a patent holder from asserting two U.S. patents in German court, reasoning that infringement of U.S. patents should be decided exclusively in U.S. courts. This post analyzes the court’s reasoning and points out some problems.

Electrolux Opens the Door

The Court of Justice of the European Union (CJEU) raised the possibility of litigating U.S. patents in the courts of EU member states with its 2025 decision in BSH v. Electrolux. In Electrolux, a German company holding a European patent sued a Swedish company in Swedish court alleging infringement of national patents validating the European patent. The CJEU held (¶¶ 74-76) that courts of an EU member state where a defendant is domiciled may hear infringement claims involving patents granted by other states, with any invalidity determinations having only inter partes effect (between the parties to the suit). Although Electrolux involved only patents granted by EU member states, it spoke of “third States” in general, suggesting to some that national courts in the EU might hear claims based on non-EU patents, including those granted by the United States.

On October 9, 2025, Onesta, LLC became the first party to assert U.S. patents in a foreign court, suing BMW for infringement of two U.S. patents and a German patent in Munich Regional Court I. Onesta is a non-practicing entity (sometimes pejoratively known as a “patent troll”) that owns patent rights but does not manufacture products or use the technology. Its suit against BMW appears to have been part of a larger effort to assert Onesta’s patents against Qualcomm and NVIDIA. In April 2025, Onesta brought claims on one of the U.S. patents before the International Trade Commission (ITC) and in two suits filed in the Western District of Texas (and assigned to Judge Albright). But with the Texas suits stayed pending the ITC’s decision and the ITC actions stalled by a federal government shutdown, Onesta sued BMW, a Qualcomm customer, in BMW’s home court.

BMW responded on December 15, 2025, by asking Judge Albright for a declaratory judgment of patent misuse, noninfringement, and invalidity and by seeking an antisuit injunction to prevent Onesta from proceeding in Germany. Judge Albright issued a temporary restraining order the next day. After briefing, he orally granted the antisuit injunction on January 13, 2026, and issued his written opinion on February 13, 2026.

Judge Albright’s Opinion

As explained in TLB’s Primer on Antisuit Injunctions, U.S. courts can issue antisuit injunctions to prevent parallel proceedings. It is a threshold requirement that the parties and the issues be the same, so that the U.S. proceeding would dispose of the foreign proceeding. There is a longstanding split among the circuits on the standard for granting such an injunction, with the Fifth Circuit on the more liberal side, giving less weight to international comity.

Parallel Proceedings

Judge Albright began by noting that the parties and the issues were the same. BMW’s request for declaratory judgment covered the same two U.S. patents that Onesta was asserting in Germany. Although Onesta had also asserted a German patent in the German action, BMW did not ask the judge to prohibit Onesta from proceeding with that claim.

Unterweser Factors

To obtain an antisuit injunction in the Fifth Circuit, a party must establish one of the so-called Unterweser factors—that “the foreign litigation would: (1) frustrate a policy of the forum issuing the injunction; (2) be vexatious or oppressive; (3) threaten the issuing court’s in rem or quasi in rem jurisdiction; or (4) where the proceedings prejudice other equitable considerations.” In this case, Judge Albright found that the first and fourth factors justified the injunction. “Allowing the Munich proceedings to continue,” he reasoned, “threatens the United States’ policy interest in adjudicating its own patents and protecting litigants’ jury rights in infringement cases.”

BMW argued strongly that federal court jurisdiction over patent cases is exclusive, relying on 28 U.S.C. § 1338(a):

The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights.

Intuitively, this seems to me like a very strong argument. On the other hand, § 1338(a) does not actually say that the district courts shall have “exclusive original jurisdiction.” Rather it says that state courts may not hear these cases. In a copyright case, the Ninth Circuit held that § 1338(a) is not exclusive. “That statute clearly grants United States district courts jurisdiction over copyright claims ‘exclusive of the courts of the states,’” the Ninth Circuit reasoned, “not exclusive of the courts of foreign nations.” Judge Albright distinguished patent cases from copyright cases on the ground that “receiving patent protections in the U.S. requires a rigorous application and examination process,” while copyright does not. But this distinction does not address the statutory language of § 1338(a), which treats patents and copyrights together.

Perhaps surprisingly, Judge Albright did not adopt BMW’s argument that Congress made federal court jurisdiction over patent cases exclusive. Instead, he reasoned that “Congress has conferred jurisdiction by empowering federal courts to adjudicate infringement of U.S. patents” and that “ensuring that U.S. patent infringement claims are adjudicated in U.S. courts is necessary to provide full justice to the parties in this case because BMW seeks a jury trial on the infringement claims” (quotation marks omitted). This is far too sweeping. The same is true, of course, for any action for damages in federal court. Sections 1331 and 1332 confer jurisdiction over federal question and diversity cases respectively, and the Seventh Amendment guarantees the right to a jury trial in any case where the amount in controversy exceeds $20. It is absurd to suggest that simply conferring jurisdiction is enough to establish a federal policy that claims should be heard exclusively in the United States.

Judge Albright also relied on the Federal Circuit’s decision in Voda v. Cordis Corp. (2007) and on the Paris Convention for the Protection of Industrial Property to support “the strong interest in adjudicating U.S. issued patents in U.S. courts.” In Voda, the Federal Circuit held that a federal court should not exercise supplemental jurisdiction over foreign patent claims, but this does not mean that German courts must make the same choice. Voda also read the Paris Convention to establish the proposition that each country’s patent system is independent. That is, of course, true. But nothing in the Paris Convention (or any other intellectual property treaty of which I am aware) prohibits the courts of one country from hearing infringement claims under the patent law of another.

International Comity

Turning to considerations of international comity, Judge Albright quoted a leading Fifth Circuit case for the proposition that “district courts are not required to bow to ‘vague and omnipotent notions of comity.’” Comity, he suggested, “is implicated by ‘public international issues,’ but not ‘private’ disputes, like breach of contract,” suggesting by his citations that comity is relevant only when a foreign government or an entity it controls is party to the suit. While this is consistent with what the Fifth Circuit has said about comity in the context of antisuit injunctions, it seriously misunderstands the role of international comity in U.S. courts, which underlies a host of doctrines that are routinely applied in “private” disputes.

Judge Albright also discounted the fact that BMW’s suit for declaratory judgment was filed after Onesta’s suit in Germany. Federal courts typically enjoin parties from proceeding with a first-filed action in foreign court only when the parties have agreed on a different forum with a forum selection clause. And while other courts have noted that “[t]he order in which the domestic and foreign suits were filed … [is] not dispositive,” they have certainly considered the order “relevant.”

The biggest shortcoming of Judge Albright’s comity analysis, however, was his failure to consider whether other alternatives might be sufficient to protect U.S. interests. He could, for example, have denied the antisuit injunction without prejudice to allow the German court to decide for itself whether to hear the U.S. law claims. It is not a foregone conclusion that Electrolux applies to patents from non-EU member states. And even if it does, BMW could have asked the German court to dismiss or stay those claims in deference to the country that granted the patent, just as the Federal Circuit did in Voda.

In the United States, the usual approach to parallel litigation is to allow both actions to proceed until one reaches judgment and can be pleaded as res judicata. Judge Albright apparently prides himself on deciding cases quickly, so he might have won the race. And, even if the German court decided the infringement claims first, a court in the United States would not have to recognize that judgment if it concluded that the German court lacked subject matter jurisdiction, which would be true if federal court jurisdiction were truly exclusive. (In a federal question case, the recognition of a foreign judgment would be governed by federal, rather than state, law.) Finally, if Judge Albright were concerned that the German court might interfere with his own jurisdiction by enjoining BMW from proceeding with its declaratory judgment action, he could have issued an anti-antisuit injunction to restrain Onesta from seeking an antisuit injunction from the German court.

In sum, there were a number of alternative paths, each more respectful of international comity, that Judge Albright could have taken. He considered none of them.

Conclusion

It would be helpful to have guidance from the Federal Circuit on the use of antisuit injunctions in cases like this. After Judge Albright’s oral ruling in January, Onesta immediately appealed and the Federal Circuit stayed the antisuit injunction. But Onesta subsequently settled its dispute with Qualcomm and, as part of the settlement, agreed to dismiss the German action. It has asked the Federal Circuit to dismiss the appeal.

It is inevitable that, after Electrolux, other parties will try to assert U.S. patents in European courts, so the issue will certainly arise again. Onesta may have been the first, but it will certainly not be the last.