Smart Denture Conversions v. Straumann USA: Denture System Patent Stayed at PTAB
Smart Denture Conversions, LLC filed suit against Straumann USA, LLC in the District of Delaware asserting US11937992B1, covering a system to convert temporary dentures into permanent prostheses — including the NeoConvert™ product. After 590 days, the case was administratively closed pending parallel PTAB inter partes review and post-grant review proceedings, leaving enforceability unresolved.
Denture conversion patent dispute parked at PTAB gate in Delaware
Smart Denture Conversions, LLC filed this infringement action against Straumann USA, LLC on 23 April 2024 in the District of Delaware before Judge John Campbell Barker. The case centres on US11937992B1, a patent covering a system for converting temporary dentures into permanent prostheses — commercialised as the NeoConvert™ system. Straumann USA, a subsidiary of the Swiss dental implant group, is alleged to have infringed that core conversion-system patent.
Before the case reached trial, the parties filed a joint stipulation to stay proceedings pending the outcome of inter partes review IPR2025-00956, which challenges US11937992B1 before the PTAB, and a separately pending post-grant review of US12156781. The court granted the stay and administratively closed the case on 4 December 2025, while denying Straumann’s earlier unilateral motion to stay as moot. The case will be reopened within seven days of the PTAB issuing its final decision in whichever proceeding concludes later.
At 590 days, the timeline suggests substantive motion practice preceded the agreed stay, including Straumann’s own stay motion (Doc. 68). The administrative closure means no merits ruling has been issued; validity of the asserted patent remains formally undecided. The public record does not disclose whether settlement negotiations accompanied the stipulation, leaving the ultimate commercial resolution unknown. The PTAB’s institution and final decision in both proceedings will be the critical next trigger.
Filing to Case Dismissed in 590 days
590 days from filing to administrative closure — consistent with early-stage district court stays pending PTAB review
Administrative closure pending PTAB: what the stay order means for both parties
Administrative closure is not a dismissal — the case survives
An administrative closure pending PTAB review suspends — but does not terminate — district court proceedings. The court retains jurisdiction and the case can be reopened by notice. This mechanism is routinely granted when parallel USPTO proceedings (IPR or PGR) may render district court invalidity analysis unnecessary or moot. Under 35 U.S.C. § 315(e), an IPR final written decision would estop Straumann from raising certain invalidity grounds in district court.
Case survives — jurisdiction retainedSmart Denture Conversions: patent validity now tested at PTAB
For Smart Denture Conversions, the stay delays any infringement finding and damages award. If the PTAB confirms patentability of US11937992B1 in IPR2025-00956 and US12156781 in the PGR, the district court litigation resumes with patent validity bolstered by USPTO scrutiny. A favourable PTAB outcome would materially strengthen their negotiating position and any eventual damages claim against Straumann.
Outcome hinges on PTAB institutionStraumann: PTAB route offers lower-cost invalidity forum
Straumann USA’s strategy of pursuing both IPR and PGR is consistent with defendants seeking to invalidate patents at the PTAB before engaging in costly district court discovery and trial. The PGR of US12156781 has not yet been instituted, preserving optionality. If either PTAB proceeding cancels the asserted claims, Straumann could extinguish the infringement action without a district court merits ruling. The denial of Straumann’s standalone stay motion as moot suggests the stipulated stay achieved the same practical result.
Dual PTAB challenge strategyDental prosthetics IP: PTAB proceedings set the validity benchmark
This case signals that same-day or rapid denture conversion technology is becoming a contested IP space. The outcome of IPR2025-00956 will set a public record on the patentability of NeoConvert™-style conversion systems, affecting freedom-to-operate for other dental prosthetics competitors. Companies developing competing conversion or immediate-loading implant systems should monitor the PTAB docket closely, as a PTAB claim construction or cancellation ruling may reshape the validity landscape across the sector.
Watch PTAB IPR2025-00956Full party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Smart Denture Conversions, LLC | Company | Dental technology IP licensor — holder of US11937992B1 covering denture conversion systemsSearch in Eureka ↗ |
| Defendant | Straumann Usa, LLC | Company | Straumann USA, LLC — U.S. subsidiary of Straumann Group, global dental implant and prosthetics manufacturerSearch in Eureka ↗ |
| Plaintiff counsel | Christine Dealy Haynes | Attorney | Counsel for Smart Denture Conversions, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Frederick L. Cottrell , III | Attorney | Counsel for Smart Denture Conversions, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Hope C. Garber | Attorney | Counsel for Smart Denture Conversions, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Jason James Rawnsley | Attorney | Counsel for Smart Denture Conversions, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Jessica Blau | Attorney | Counsel for Smart Denture Conversions, LLCSearch in Eureka ↗ |
| Plaintiff counsel | John L. Gibbons | Attorney | Counsel for Smart Denture Conversions, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Kelsey I. Nix | Attorney | Counsel for Smart Denture Conversions, LLCSearch in Eureka ↗ |
| Plaintiff law firm | Richards Layton & Finger PA | Law Firm | Representing Smart Denture Conversions, LLCSearch in Eureka ↗ |
| Defendant counsel | Christopher Gosselin | Attorney | Counsel for Straumann Usa, LLCSearch in Eureka ↗ |
| Defendant counsel | Emily DiBenedetto | Attorney | Counsel for Straumann Usa, LLCSearch in Eureka ↗ |
| Defendant counsel | Georg C. Reitboeck | Attorney | Counsel for Straumann Usa, LLCSearch in Eureka ↗ |
| Defendant counsel | Karen Elizabeth Keller | Attorney | Counsel for Straumann Usa, LLCSearch in Eureka ↗ |
| Defendant counsel | Lindsey Michelle Gellar | Attorney | Counsel for Straumann Usa, LLCSearch in Eureka ↗ |
| Defendant counsel | Mark Chapman | Attorney | Counsel for Straumann Usa, LLCSearch in Eureka ↗ |
| Defendant counsel | Nathan Roger Hoeschen | Attorney | Counsel for Straumann Usa, LLCSearch in Eureka ↗ |
| Defendant law firm | Shaw Keller LLP | Law Firm | Representing Straumann Usa, LLCSearch in Eureka ↗ |
| Presiding judge | Judge John Campbell Barker | Judge | Delaware District CourtSearch in Eureka ↗ |
Official order — verbatim text
The court’s order reflects a procedurally mature stay analysis: the parties’ joint stipulation superseded Straumann’s earlier unilateral motion, which was denied as moot. The administrative closure language — requiring Straumann to file notice within seven days of the later PTAB final decision — preserves the court’s supervisory role without issuing any substantive ruling on infringement or validity. No merits findings attach to this closure; the case remains live in substance.
US11937992B1 — Temporary-to-permanent denture conversion system
US11937992B1 protects a system enabling the conversion of temporary dentures into permanent prostheses — a workflow described as achievable in as little time as a single clinical session, commercialised as the NeoConvert™ system. The patent was filed under application number US18/328730 and granted as a B1 publication, indicating no prior published application, suggesting a relatively swift prosecution. It falls within the dental prosthetics and implant-supported restoration space — a technically demanding field where method and system claims around speed and simplicity of workflow have material clinical and commercial value.
For the dental implant sector, patents covering conversion workflows are strategically significant because they define the clinical protocol, not merely the physical component. A system claim covering the end-to-end conversion process can capture competitors using materially similar procedures regardless of component sourcing. Straumann’s decision to challenge via both IPR and PGR — rather than design around — suggests the claims are perceived as broadly drafted. Any company developing same-day implant prosthetics, immediate-loading systems, or chairside CAD/CAM conversion workflows should assess exposure against US11937992B1 and the related US12156781.
Should your dental prosthetics team run an FTO against US11937992B1?
Any company developing, manufacturing, or distributing temporary-to-permanent denture conversion systems — particularly those targeting same-day or immediate-loading prosthetic workflows — should treat US11937992B1 as a live FTO risk. The NeoConvert™ system is an actively commercialised product and the patent holder has demonstrated willingness to litigate against a major global competitor. The pending PTAB proceedings do not eliminate infringement risk during the stay period; district court proceedings can be reopened and damages may be calculated from the date of first infringement.
PatSnap Eureka’s FTO Search Agent can map the claims of US11937992B1 against your product’s technical workflow, identify prosecution history estoppel that may narrow claim scope, and surface related portfolio patents such as US12156781. Eureka also monitors the PTAB docket for IPR2025-00956 in real time, alerting your team to institution decisions, claim amendments, and final written decisions — the events that will determine whether this case is reopened and on what footing.
Run a freedom-to-operate analysis on US11937992B1 to assess your product’s exposure
Run FTO in Eureka →Similar dental prosthetics patent cases in Delaware District Court
Explore patent infringement cases involving dental implant and prosthetic conversion systems litigated in the District of Delaware, including PTAB-stayed actions.
What this case signals for the dental prosthetics IP landscape
A stayed Delaware infringement action and dual PTAB challenge reflect the growing battleground over rapid denture conversion technology patents.
PTAB stays are now standard playbook in dental device patent disputes
Straumann’s dual-track PTAB strategy — filing both an IPR and a PGR — is increasingly common for well-funded defendants in medical device cases. Patent holders in the dental prosthetics sector should expect PTAB petitions as a near-automatic response to district court infringement suits, and should build PTAB contingency budgets from day one of litigation.
Administrative closure preserves plaintiff leverage — but delays monetisation
Smart Denture Conversions retains the ability to reopen the case and pursue damages once PTAB proceedings conclude. However, the delay — potentially 18–24 months for PTAB final decisions — means injunctive relief and damages are deferred. Licensing strategy should account for this runway: PTAB institution rates and the strength of the patent prosecution history are now the key variables.
Smart v Straumann — key questions answered
Administrative closure suspends — but does not terminate — the district court case. The court retains jurisdiction and the case will be reopened within seven days of the PTAB issuing its final decision in either IPR2025-00956 or the post-grant review of US12156781, whichever concludes later. No merits ruling on infringement or validity has been issued.
The district court complaint asserts US11937992B1, covering a system for converting temporary dentures into permanent prostheses (the NeoConvert™ system). A second patent, US12156781, is the subject of a separate post-grant review before the PTAB that has not yet been instituted as of the case closure date.
IPR2025-00956 is an inter partes review petition filed by or on behalf of Straumann USA challenging the validity of US11937992B1 before the USPTO Patent Trial and Appeal Board. The district court case was stayed pending the PTAB’s final written decision in that proceeding. If the PTAB cancels the challenged claims, the district court action would likely be mooted.
An administrative stay does not extinguish the right to damages. If the PTAB proceedings confirm patentability and the district court case is reopened, Smart Denture Conversions could seek damages calculated from the date of first alleged infringement. However, no injunctive or monetary relief will be available until the case is reopened and litigated to judgment or settlement.
If the PTAB issues a final written decision cancelling the challenged claims of US11937992B1, the asserted patent would be invalidated as to those claims. Straumann would then file notice with the court, which could move to dismiss the infringement action. Straumann would also benefit from § 315(e)(2) estoppel only in the event of a final written decision — in this scenario, estoppel would be irrelevant as the claims would be cancelled.
PatSnap Eureka searches patents and litigation data to answer instantly.