Sholem Weisner and Shmuel Nemanov v. Google LLC

CourtDistrict Court, S.D. New York
DecidedJanuary 15, 2026
Docket1:20-cv-02862
StatusUnknown

This text of Sholem Weisner and Shmuel Nemanov v. Google LLC (Sholem Weisner and Shmuel Nemanov v. Google LLC) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Sholem Weisner and Shmuel Nemanov v. Google LLC, (S.D.N.Y. 2026).

Opinion

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK nee □□□ cence eee ee nena ennennnmnnenee KX SHOLEM WEISNER and : OPINION AND ORDER SHMUEL NEMANOV, : SETTING BENCH TRIAL ON Plaintiff and Involuntary Plaintiff, ANTIRMATIVE DEFENSE ~against- : 20 Civ. 2862 (AKH) (VF) GOOGLE LLC, : Defendant. penne ee ee nent nnnennneeeeennmaneae KX ALVIN K, HELLERSTEIN, U.S.DWJ.: Plaintiffs Sholem Weisner and Shmuel Nemanov own patents for internet systems that track visits to locations by history and frequency. Their suit against Google LLC for patent infringement is ready for trial, and a date to select a jury and begin trial was set, February 2, 2026. In advance of trial and after completion of discovery, both sides moved for summary judgment regarding two equitable defenses relating to the procurement of the patents: Plaintiffs’ inequitable conduct and prosecution laches. Plaintiffs move to strike the defenses; Defendant moves to uphold the defenses and dismiss the complaint. The defenses are equitable in nature and triable to the Court, The proofs are separable from the merits of the infringement lawsuit. If either defense is proved, the complaint must be dismissed. The defenses should be determined before a trial jury is selected. The principai issue relating to the defenses of inequitable conduct is the consequence of a seven-year lapse in the prosecution of the patents, between April 13, 2010, when the U.S. Patent and Trademark Office (“PTO” or ‘Patent Office”) issued a Notice of Abandonment, and June 1, 2017, when Plaintiffs filed a revival petition.

The parties presented an extensive record in support of, and in opposition to, their summary judgment motions. On August 26, 2025, I referred the motions to United States Magistrate Judge Valerie Figueredo for report and recommendation, see 28 U.S.C. § 636(b)(1)(B)-(C), ECF Nos. 392-93, and authorized her to conduct any bench trial that she might find necessary. She filed her report and recommendation on November 21, 2025 (the “R&R” or the “Report”), Plaintiff Weisner timely filed Objections, and Google filed a Response to Plaintiff's objections. Judge Figueredo’s 103-page R&R thoroughly examined the deposition transcripts, affidavits, and other materials presented by the parties and conducted an evidentiary hearing to elicit the procedures of the Patent Office in considering revival applications after abandonment of patent prosecutions. Sholem Weisner and Shmuel Nemanov refused to testify, though subpoenaed and ordered to comply. Judge Figueredo recommended that summary judgment not be granted, either to strike or to grant the affirmative defense of inequitable conduct, because of material issues of fact regarding the issue at the heart of the defense, whether Plaintiffs, in their revival application, had certified accurately and in good faith that “the entire period of delay was unintentional,” as required by 37 C.F.R. § 1.137. She recommended granting Weisner’s motion that summary judgment on the defense of prosecution laches had not been proved. And she made numerous findings of fact based on the parties’ Local Rule 56.1 statements, deposition testimony, and exhibits. Judge Figueredo recommended, on the merits, that I find that Google had proved Weisner’s and Nemanov’s inequitable conduct clearly and convincingly, that their refusal to testify, and to comply with court orders and subpoenas requiring them to testify, justified adverse inferences against them, and that the evidence, the affirmative defense of inequitable conduct should be granted. Furthermore, Judge Figueredo recommended, that Plaintiffs’ refusal to comply with court orders commanding

them to testify warranted involuntary dismissal of their complaint pursuant to Rule 41(b), Fed. R. Civ, P. I have reviewed de novo all disputed issues. I accept the R&R’s recommended findings of undisputed fact as set out below, see R. 56(g), Fed. R. Civ. P. I believe that these would be sufficient to grant judgment dismissing the complaint for inequitable conduct but, to aveid doubt, I grant Weisner and Nemanov leave to re-open the record, testify themselves if they wish to do so, add any other information, and elicit any other testimony, relevant to the issue in dispute. I decline either to accept, or reject, Judge Figueredo’s recommended disposition that the affirmative defense of inequitable conduct be granted. I reserve consideration of Judge Figueredo’s recommended disposition on the affirmative defense of inequitable conduct until after the hearing described below. The affirmative defense of inequitable conduct will be heard by me at 10:00 am, February 2, 2026, in Courtroom 14D, 500 Pearl Street, New York, NY 10007, and, if needed, on February 3, 2026 and February 9, 2026 at 10:00 am. The scheduled final pretrial conference on January 27, 2026 shall be limited to the issues of the bench trial on the affirmative defense of inequitable conduct. The findings of fact made below will be incorporated in the record of the bench trial. In the meantime, and pending determination of the affirmative defense, the trial previously ordered to begin February 2, 2026 is adjourned to a date to be set, if necessary, by my order determining the affirmative defense. Google does not object to Judge Figueredo’s recommendation that the affirmative defense of prosecution laches was not proved, and I adopt the recommendation. The defense is struck for the reasons in Judge Figueredo’s recommendation. The Report’s recommendation of adverse inference for Plaintiffs’ failure to appear and testify is reserved. The recommendation that the

complaint be dismissed under Rule 41(b) is rejected. Judge Figueredo’s recommendations limiting Robert Stoll’s testimony are accepted. BACKGROUND Weisner filed his complaint on April 6, 2020, alleging that Google infringed on his patents. On July 31, 2025, the parties cross-moved for summary judgment on Google’s affirmative defenses of inequitable conduct and prosecution laches. See ECF Nos. 339, 342. At the status conference of July 15, 2025, in declaring their intent to cross-move for summary judgment, the parties agreed that if factual disputes existed as to Google’s equitable defenses, they should be resolved by a bench trial, rather than through a jury trial. See Tr. of July 15, 2025 Stat. Conf. at 4-5, 9, 11; see also Modine Mfg. Co. v. Allen Grp., Inc., 917 F.2d 538, 541 (Fed. Cir. 1990) (“The ultimate question of whether inequitable conduct occurred is equitable in nature, committed to the discretion of the trial court”). I referred the motions for summary judgment to Magistrate Judge Figueredo on August 26, 2025 for a report and recommendation on the summary judgment motions and any evidentiary hearing as may be necessary. ECF No, 392, Judge Figueredo scheduled evidentiary hearings to take place on October 21-23, 2025. On September 29, 2025, Weisner filed an emergency motion to vacate the referral to Judge Figueredo, arguing that the scheduled hearings exceeded the magistrate judge’s authority. ECF No. 410. I denied the motion on October 1, 2025, by written order, stating that the referral was properly within the scope of a magistrate judge’s authority. ECF No. 414. Weisner then filed a petition for mandamus before the Federal Circuit, which the Federal Circuit denied on October 7, 2025, finding that while “some courts have concluded at magistrate judges typically lack the authority to perform fact finding on the merits” without the parties’ consent that here “it is far from clear and indisputable” that the magistrate judge would exceed her

authority. ECF No. 433 at 3.

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Sholem Weisner and Shmuel Nemanov v. Google LLC, Counsel Stack Legal Research, https://law.counselstack.com/opinion/sholem-weisner-and-shmuel-nemanov-v-google-llc-nysd-2026.