PTAB challenges

Proceedings overview

A single Post-Grant Review (PGR) proceeding, PGR2025-00066, has been filed against US Patent 12125319 and was denied institution on the merits. However, separate legal events indicate that claims 21, 22, 28, 30, 32, and 33 of the patent were subsequently disclaimed. This means those specific claims are no longer part of the patent. For a defendant, this presents a mixed defensive posture: while the PGR itself did not lead to invalidation by the PTAB, a portion of the patent has been voluntarily removed. The remaining claims have survived an institution challenge but have not been tested on the merits in an AIA trial.

PGR2025-00066 — Election Systems & Software, LLC v. Hart InterCivic, Inc.

• Type: Post-Grant Review
• Filed: 2025-07-17
• Status: Institution Denied. The petition for Post-Grant Review was not instituted on the merits.
• Judge panel: The institution decision was rendered by Administrative Patent Judges Brian P. Murphy, Beverly Klopfenstein, and Jessica H. Caroff.
• Petition grounds: The petition challenged claims 1-40 of US12125319 under 35 U.S.C. §§ 101, 102, 103, and 112.
• Institution decision: Denied on 2026-01-17. The Board found that the petitioner failed to establish a reasonable likelihood that at least one challenged claim was unpatentable. Specifically, the Board determined that Election Systems & Software, LLC had not shown that claims 1, 15, 29, and 34 were unpatentable under the asserted grounds.
• Final Written Decision: Not issued, as institution was denied.
• Settlement / termination: Not applicable.
• Appeal: Not applicable, as institution was denied.
• Defensive value: While the petition to institute a PGR was denied, demonstrating the patent owner's success in defending against this particular challenge, the patent owner subsequently disclaimed claims 21, 22, 28, 30, 32, and 33. Any infringement theory based on these six claims is now moot. The remaining claims (1-20, 23-27, 29, 31, 34-40) have not been substantively reviewed for patentability by the PTAB.

Strategic summary

Claims 21, 22, 28, 30, 32, and 33 of US12125319 are now CANCELED due to a disclaimer filed by the patent owner on 2025-09-25. The remaining claims (1-20, 23-27, 29, 31, 34-40) are UNTESTED by a full PTAB trial, as the sole PGR proceeding (PGR2025-00066) against the patent was denied institution. No claims were expressly SUSTAINED on the merits by a Final Written Decision.

Regarding estoppel, since PGR2025-00066 was denied institution, statutory estoppel under 35 U.S.C. § 315(e)(2) does not apply to the petitioner (Election Systems & Software, LLC) or its privies for the grounds raised in that petition. However, common law estoppel principles might still be argued in a district court setting regarding the specific grounds and art considered during the institution phase. For other potential defendants, the prior art grounds raised in PGR2025-00066 remain available for challenge, subject to statutory filing deadlines.

The patent owner's decision to disclaim six claims (21, 22, 28, 30, 32, 33) after the institution of the PGR was denied is a notable pattern signal. This suggests that even though the PTAB did not proceed with a full review, the patent owner may have recognized vulnerabilities in these specific claims, leading to their voluntary removal from the patent. There is no evidence of the same petitioner filing multiple AIA trials or aggressive appeals to the Federal Circuit for this patent, and no defensive aggregator is explicitly noted in the chain beyond Election Systems & Software, LLC as the petitioner.

Recommended next steps

• Given that claims 21, 22, 28, 30, 32, and 33 have been disclaimed, any demand letters or infringement contentions citing these claims are no longer viable. The details of the disclaimer can be found in the patent's legal events, effective 2025-09-25, which states: "DISCLAIM THE FOLLOWING COMPLETE CLAIMS 21, 22, 28, 30, 32, 33".
• There are currently no active AIA trial proceedings pending against US12125319.
• For any potential future challenges, consider the specific reasoning for the denial of institution in PGR2025-00066 (available at the USPTO PTAB E2E portal via the proceeding number PGR2025-00066). A new petition would need to demonstrate a higher likelihood of success and potentially address the Board's prior reasoning for denial.