Tesla says rival stole electric semi designs from inventor

The Nikola founder asserting patent infringement against Tesla over its electric semitruck allegedly stole the ideas in question from someone else, Tesla argued in counterclaims Wednesday.

The leading electric vehicle manufacturer said the patents should be invalidated since the Nikola executive concealed information to secure ownership of the intellectual property.

"The design patents were procured through inequitable conduct before the USPTO and are therefore unenforceable," Tesla attorney Michael Friedland of Knobbe, Martens, Olson & Bear LLP wrote.

Nikola maintained in a statement that Tesla's semitruck "infringes not only certain Nikola design patents and utility patents but also its trade dress."

With California Gov. Gavin Newsom's announcement Wednesday that the state plans to ban the sale of new gas-powered vehicles starting 2035, the battle for dominance in the commercial market for electric vehicles has taken on even more significance.

Tesla led sales for plug-in electric vehicles in the state for the second consecutive year in 2019. Nikola, meanwhile, announced this month a $2 billion manufacturing partnership with General Motors.

Nikola sued in 2018 alleging Tesla's all-electric semitruck was too similar to its hydrogen-electric semitruck. Nikola claimed Tesla infringed on design elements, including its cab shape, wraparound windshield and mid-entry side door. It's seeking more than $2 billion in damages, arguing the introduction of a similar vehicle by a direct rival hurt its ability to attract investors.

Tesla did not immediately respond requests for comment but has denied any misconduct.

In counterclaims filed in federal court in San Francisco, Tesla argued it cannot infringe on the disputed patents since they were improperly obtained. Nikola Corp. v. Tesla, Inc., 18-CV-07460 (N.D. Cal., filed Sept. 23, 2020).

Adriano Mudri's hydrogen-powered Road Runner concept truck was selected for display at the 2010 North American International Auto Show, according to court filings. Mudri met Nikola founder Trevor Milton, owner of the patents in question, in 2014 or 2015. But Milton, Tesla alleged, concealed information relating to the inventiveness and inventorship of the designs when he applied for ownership of the intellectual property in 2015.

"Adriano Mudri's Road Runner concept truck design constituted a significant inventive contribution to the inventions claimed in the design patents," Friedland wrote. "[He] was not identified as an inventor during prosecution of the applications that led to the design patents."

Tesla argued the Nikola founder would not have been issued the patents if he had properly represented Mudri as a co-inventor. The plaintiff's attorneys said Milton intentionally did so with "deceptive intent."

Mudri is director of design at Rimac Automobil. The Croatian electric car company did not immediately respond to requests for comment.