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Tesla Argues Nikola Deceived PTO to Get Design Patents

Sept. 24, 2020, 2:45 PM

Three Nikola Inc. patents covering the design of its flagship “Nikola One” hydrogen-powered semi-truck are invalid because it failed to disclose a similar earlier truck design to the U.S. Patent and Trademark Office, Tesla Inc. told a San Francisco federal court.

Nikola debuted its long-haul truck powered by a hydrogen fuel cell in 2016. It sued Tesla in 2018, alleging Tesla’s planned semi infringed its design and utility patents as well as its trade dress. The U.S. District Court for the Northern District of California rejected Tesla’s attempt to dismiss Nikola’s design patent claims on Sept. 9, finding the designs could be similar enough to show infringement.

But Tesla argued Nikola’s design patents were invalid because the design was predated by an earlier hydrogen-powered truck.

According to Tesla, Adriano Mudri designed the Road Runner concept truck, which was entered into the 2010 Michelin Design Challenge and selected for display at the 2010 North American International Auto Show. Tesla says Nikola’s founder Trevor Milton met with Mudri in 2014 or 2015.

Nikola’s patents wouldn’t have been granted if it hadn’t intentionally concealed the Road Runner design from the PTO, Tesla says. Tesla also says Mudri should have been listed as an inventor on the patents.

Tesla requested the court declare that the patents are invalid and that it doesn’t infringe.

Knobbe, Martens, Olson & Bear LLP represents Tesla. Steyer Lowenthal Boodrookas Alvarez & Smith LLP and Beus Gilbert McGroder PLLC represent Nikola.

Judge James Donato is presiding.

The case is Nikola Corp. v. Tesla Inc., N.D. Cal., No. 3:18-cv-07460, answer filed 9/23/20.

To contact the reporter on this story: Blake Brittain in Washington at bbrittain@bloomberglaw.com

To contact the editors responsible for this story: Rob Tricchinelli at rtricchinelli@bloomberglaw.com; Nicholas Datlowe at ndatlowe@bloomberglaw.com