Tesla filed an answer on Wednesday in the Northern District of California to zero-emissions vehicle startup Nikola Corporation’s Third Amended Complaint and Counterclaims stemming from a December 2018 suit, alleging that the Tesla Semi infringed Nikola’s truck design; Tesla stated that Nikola built its truck off of a concept by designer Adriano Mudri from 2010. Mudri is currently the director of design for Rimac, a Croatian electric car company.
For a majority of allegations, Tesla stated that it “lacks sufficient knowledge or information to admit or deny the allegations…and therefore denies those allegations. Tesla did admit that it “released its 2016 Master Plan, Part Deux on July 20, 2016 and stated therein that ‘heavy-duty trucks’ ‘are in the early stages of development at Tesla and should be ready for unveiling next year.’”
Tesla asserted several affirmative defenses; for example, Tesla stated that “Nikola’s claims are barred because Tesla has not infringed any valid and enforceable claim of the” patents-in-suit and Tesla asserted that some of the claims of the patents-in-suit are “invalid for failure to comply with one or more of the conditions set forth in Title 35 of the United States Code.” Furthermore, Tesla alleged that the Third Amended Complaint does not state a claim upon which relief can be granted, does not state a claim for an exceptional case, is barred by the doctrine of unclean hands, and that at least one of the patents-in-suit “are unenforceable for inequitable conduct as a result of the conduct of one or more of the named inventors of the Patents-in-Suit.” Additionally, Tesla stated that Nikola’s trade dress claims are invalid “because there has been no use in commerce.”
Tesla also alleged various counterclaims against Nikola. In alleging inequitable conduct during the prosecutions of the patents-in-suit, Tesla explained that “Adriano Mudri is the designer of the Road Runner concept truck. The Road Runner truck is a hydrogen-powered concept truck. The Road Runner concept truck was entered into the 2010 Michelin Design Challenge, and was selected for display at the 2010 North American International Auto Show.” Furthermore, Tesla stated that it believes that “Trevor Milton, the founder of Nikola and an inventor on the ’D944 Patent, the ’D968 Patent, and the ’D004 Patent (the ‘Design Patents’), met with Adriano Mudri during 2014 and/or 2015.” On these asserted patents, Trevor R. Milton and Steve Jennes are listed as the inventors. However, Tesla averred that “Trevor Milton was aware of the Road Runner concept truck before the Design Patent Applications were filed.” Tesla claimed that Mudri’s concept was “a significant inventive contribution to the inventions claimed in the Design Patents,” but Mudri was not a named inventor of the asserted patents.
Tesla alleged that “the named inventors of the Design Patents…had a duty of candor to the United States Patent and Trademark Office.” Furthermore, according to Tesla, “Trevor Milton failed to provide material information to the USPTO relating to the inventiveness and inventorship of the claimed inventions.” Tesla illustrated this by alleging that the “designs claimed in the Design Patents are similar to the Road Runner concept truck design,” which Milton allegedly “intentionally concealed from and did not identify to the USPTO was material to the issuance of the Design Patents.” Tesla also proffered that Milton failed to disclose this information to the USPTO, which should constitute “deceptive intent.” Tesla added that the “Design Patents were procured through inequitable conduct before the USPTO and are therefore unenforceable.”
Additionally, Tesla noted that several features of Nikola’s designs are commonly featured on semi-trucks, such as the wraparound windshield and a general streamlined shape. Tesla included photographs of other semi-trucks that share features of Nikola’s patented design.
Tesla’s counterclaims include declaration of noninfringement and patent invalidity for the Design Patents and patents-in-suit, declaratory judgment of no trade dress infringement, declaratory judgment of no trade dress rights, and declaration of patent unenforceability.
Tesla has sought for the court to dismiss the Third Amended Complaint with prejudice and enter judgment in Tesla’s favor; a declaratory judgment that Tesla did not infringe the patents-in-suit and that said patents are invalid and unenforceable; a judgment that Nikola’s alleged trade dress is invalid; and an award for costs and fees.
Tesla is represented by Knobbe, Martens, Olson & Bear, LLP.
Recently, Nikola was sued for securities fraud; the plaintiffs alleged that the company falsely represented its capabilities by, for example, in an allegedly staged video promoting its truck, having its truck towed up a hill and filming it rolling down the hill. Milton, Nikola’s founder, stepped down in recent days as a result of the report underpinning that lawsuit.