Patent office gives Nikola a small victory in $2B lawsuit over Tesla Semi

When it comes to Class 8 trucks, it’s Nikola vs. Tesla on the road and in the courtroom. Nikola unveiled a rendering of its Nikola One truck on Twitter on May 9, 2016, and showed a prototype in December of that year. In November 2017, Tesla revealed its Tesla Semi. Depending on how one feels about Class 8 trucks, one could say that design-wise, the Tesla Semi had a number of aspects in common with the Nikola One, such as the side door and wraparound windshield. Of course, one could also get on any highway and see that Class 8 trucks in the U.S. all look about the same. The problem is that in 2015 Nikola applied to patent the Nikola One’s wraparound windshield, mid-entry door, fender, side cladding, fuselage, and overall design of the Nikola One.

The U.S. Patent and Trademark Office granted all six patents in early 2018. In May 2018, Nikola sued Tesla for $2 billion, claiming patent infringement because the Tesla Semi allegedly looks “substantially” like Nikola’s truck, leading to issues like “confusion among customers” and damage to the Nikola brand if “any problems with the Tesla Semi [are] attributed to the Nikola One.”

The case continues its way through the courts, the latest update being a small victory for Nikola. In September 2019, Tesla asked the USPTO to review Nikola’s mid-entry side door patent, seeking to overturn it. At the end of March this year, the USPTO declined Tesla’s review request, writing “that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least one claim of the ‘084 patent is unpatentable.” The “084” applies to patent 10,077,084, for “Systems, Methods, and Devices for an Automobile Door or Window.” That’s effectively Nikola’s utility patent describing the fine details of the side door; however, the lawsuit is over the side-door’s design patent and two other design patents, which are less complex kinds of registrations that illustrate how an innovation is distinctive.

Nikola founder and CEO Trevor Milton was a touch more exuberant about the decision than the USPTO, tweeting, “Tesla loses bid to invalidate @nikolamotor patents in USPTO dispute. USPTO not only upheld Nikola semi truck important patents but refused Tesla’s ask to modify our patents. Two billion dollar lawsuit moving forward. We will defend our company’s IP no matter who it is.”

There’s a long way to go and undoubtedly more rocks in the road. Tesla had asked the court to move the case from Nikola’s Arizona base to Tesla’s Northern California base, and to dismiss the case outright. The court agreed to the former but not the latter. The lawsuit filing alleges that a recruiter for Tesla contacted Nikola chief engineer Kevin Lynk in September 2016 because, “[b]ased on [Lynk’s] background at Nikola, it seems like [Lynk’s] background would be a great fit” with the heavy duty truck Tesla was working on. The filing also claims that Nikola sent Tesla a letter just after Tesla tweeted a teaser image of the Semi “that identified the semi-truck design features Nikola was patenting and demanded that Tesla not unveil its semi until Tesla’s infringement had been resolved. Tesla never responded.” On the other side, in 2017 the USPTO granted Tesla a range of design patents for the Semi, including for the overall cab design and numerous details like the headlights, rear panel, charge port door, instrument panel, sun visor, and side console.  

As for when we’ll see either on the road, we know the Tesla has been out testing in hot and cold weather, we’re still waiting for word on a market launch. Matters are only slightly more concrete at Nikola, the company planning to roll out its battery-electric Nikola Tre, developed in Europe with Iveco, in the first part of 2021, and the hydrogen fuel cell Nikola One due on U.S. highways in late 2021. Based on the designs we’ve seen so far, Nikola and Tesla should avoid fisticuffs when it comes to the Nikola Badger pickup and Tesla Cybertruck.

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