. @Tesla has filed its answer to @nikolamotor's design patent (and other) claims, along with counterclaims alleging inequitable conduct: https://www.scribd.com/document/477673255/Nikola-v-Tesla-Answer h/t @davidmichaels & @patentbuddy

Here's the basic inequitable conduct claim:

Under Therasense, inequitable conduct is a very tough row to hoe. Here's a nice summary from @patentlyo: https://patentlyo.com/patent/2011/05/therasense-v-bd-en-banc-federal-circuit.html

What's more interesting to me here is how how this new piece of prior art (and the others mentioned in the answer) affect the scope of the design patent claim.

As I've said here before, I think Tesla's designs are plainly dissimilar. For some earlier observations, see, e.g., https://twitter.com/design_law/status/1305476388925984768

When designs are plainly dissimilar, the factfinder does not have to consider the prior art. For more on how this all works, see this short piece: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3338471

But, at step 2 of the Egyptian Goddess test, the factfinder can consider the prior art in order to narrow the presumptive scope of the design patent. This is a one-way ratchet; you can only use the prior art to narrow, not to broaden, the scope of the DP: https://twitter.com/design_law/status/991651626581708800

Anyway, the answer here paints a VERY different picture of the prior art. So even if the accused designs are not deemed plainly dissimilar, these references (assuming they do, in fact, qualify as prior art) should be used to narrow the presumptive scope of the claim:

Okay, moving on to trade dress. Here's how Nikola describes it's purported trade dress (screenshots from the third amended complaint):

Luv 2 allege that my purported trade dress is functional (yes, this is the complaint)

Anyway, Tesla alleges that Nikola's purported product-design trade dress is "not inherently distinctive."

That's a weird allegation because SCOTUS has held that product-design trade dress can never be inherently distinctive: https://www.oyez.org/cases/1999/99-150

Oh, I forgot. Tesla also alleges that all of the asserted design patents are invalid because they "emcompass[] functional features." That is not actually a problem under existing Federal Circuit case law.

As long as the claimed design *as a whole* is not "primarily functional" (i.e., as long as there are alternative designs), the design is "ornamental" per the Federal Circuit. See https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2710661