On November 21, 2025, United States Magistrate Judge Valerie Figueredo recommended that the Court conclude that Plaintiff Sholem Weisner’s conduct in “reviving the ’165 patent constituted inequitable conduct” because, inter alia, Weisner was not incapacitated by illicit drug use during the entire delay.
Weisner is an inventor of four patents generally directed to recording the physical location of a user along with the user’s online “surf history.” Each of the four patents issued from a common application, U.S. Patent App. No. 11/811,165 (“the ’165 Application”).
The ’165 Application was filed on June 7, 2007 by Steven Horowitz, the prosecuting attorney, and named Weisner and Shmuel Nemanov as co-inventors. Around that time, Weisner “was prescribed drugs, including OxyContin and Xanax” and “the strength of Weisner’s OxyContin and Xanax prescriptions increased rapidly.” Between 2009-2015, Weisner used other non-prescribed drugs, including heroin, morphine, crack cocaine, and crystal meth.
On February 13, 2009, the PTO issued a final rejection for the ’165 Application. On August 13, 2009, Horowitz filed a request for continued examination. On September 30, 2009, the PTO issued a non-final rejection and allowed the parties to respond by March 30, 2010. Horowitz e-mailed the co-inventors, but no response to the office action was filed. As such, the PTO issued a notice of abandonment. Horowitz “believed that the ’165 Application was abandoned because Weisner was ‘seriously incapacitated,’ and Nemanov ‘felt strongly’ that Weisner needed to be involved in any response to the PTO.”
Eight years later, on May 17, 2017, Weisner e-mailed Horowitz to inquire about reviving the ’165 Application. Horowitz determined that he could represent to the PTO that the entire period of abandonment for the ’165 Application was “unintentional.” On June 1, 2017, Horowitz’s law partner, Dr. Friedman, filed a petition to revive, certifying that the entire delay was “unintentional.” However, Dr. Friedman had “zero knowledge of the facts surrounding” the delay. On September 14, 2017, the PTO granted the petition to revive the ’165 Application, relying on the statement that the entire delay was “unintentional.”
The Court considered several facts regarding whether Weisner and Nemanov intentionally abandoned the application. Defendant Google argued that during the relevant period Weisner was not incapacitated because he: filed a response to the PTO, pled guilty to misdemeanor charges in a separate court, and provided a sworn affidavit to the Brooklyn District Attorney’s office regarding a pending criminal case. This “undermine[d] Weisner’s claim that he was out of commission” with a drug problem for the entirety of the period. Google argued that there was evidence “Weisner used a computer, talked to people on the phone, drove a car, signed documents, played and won online ranked chess games . . . and attended social events” during portions of the delay period as well.
The Court noted that Horowitz’s investigation into Weisner’s incapacity was inadequate and only involved “speaking to a single person – Weisner.” The Court acknowledged that “Weisner admits that he stopped using hard drugs in February 2015 but noted that he didn’t seek to revive the ’165 Application until June 2017.
The Court found that such conduct constituted inequitable conduct. First, the Court found that the representation that the entire period of delay was “unintentional” was material to the PTO’s decision to revive the abandoned ’165 Application. The PTO would not have revived the ’165 Application without that representation. The Court also found that various periods of the delay were in fact intentional. This is so because during the relevant time frame, Weisner was rational enough to enter a plea before a judge in Connecticut. The Court also noted that for the two years after Weisner returned from rehab, he was off drugs yet still did not seek to revive his application. The Court determined that the abandonment was instead due to Weisner’s inability to pay Horowitz’s legal fees, which is not unintentional.
The Court found Weisner and Dr. Friedman possessed the intent to deceive. “Given the lengthy period of time after February 2015 and Weisner’s financial troubles in 2009, the representation in the Revival Petition that the entire period of delay was unintentional could not have been based on a good faith belief that Weisner was incapacitated.” Instead, the most reasonable inference was that “the representation was made with an intent to deceive, by Dr. Friedman and Weisner, both of whom owed the PTO a duty of good faith and candor.” Dr. Friedman represented something to be true that he did not possess enough knowledge about; Dr. Friedman “knew ‘very much nothing about’ the ’165 Application.” Weisner likely forged signatures, contradicted himself regarding his “assertion of incapacity,” and used his drug use to excuse the entire period of delay as unintentional. As such, the Court recommended “a finding that Weisner’s conduct in reviving the ’165 patent constituted inequitable conduct.”
The case is Weisner v. Google LLC, Case No. 20-cv-2862 (AKH) (VF) (S.D.N.Y. Nov. 21, 2025)
