Niazi Licensing Corporation v. St. Jude Medical S.C., Inc.
- Elizabeth Cowan Wright
- 0:17-cv-05096
- U.S. District Court · District of Minnesota
- 12
In Niazi Licensing v. St. Jude, Judge Wright granted enforcement of a binding settlement based on an email, excluding a later covenant not to sue.
Niazi Licensing Corporation and St. Jude Medical S.C., Inc.; the original settlement terms were enforced, while the later covenant not to sue and mediator-proposed revisions were not included.
What happened
Niazi Licensing Corporation sued St. Jude Medical S.C., Inc., alleging indirect infringement of a patent involving a catheter system. After later settlement discussions, Niazi asked the court to enforce an agreement reflected in an April 17, 2023 email, while St. Jude opposed enforcement.
The court found that St. Jude’s attorney had responded “Agreed” to an email stating the settlement’s material terms. It also found that later disagreements, including St. Jude’s request for a covenant not to sue and proposed changes from the mediator, did not undo the original agreement.
Judge Wilhelmina M. Wright granted Niazi’s motion to enforce settlement and ordered judgment entered based on the original terms in the April 17 email.
The detailed version
- Niazi Licensing Corporation v. St. Jude Medical S.C., Inc. · No. 0:17-cv-05096
- Elizabeth Cowan Wright
- Jan. 18, 2024
Background
Niazi Licensing Corporation owns U.S. Patent No. 6,638,268, concerning a catheter system that can be inserted into the coronary sinus of the heart and methods for using it. Niazi sued St. Jude Medical S.C., Inc., alleging that St. Jude indirectly infringed the patent by inducing medical professionals to infringe it.
The court previously granted St. Jude summary judgment of non-infringement as to the remaining disputed method claim. The Federal Circuit later affirmed that ruling as to claim 11, while reversing or remanding other aspects of the case. The district court also addressed attorneys’ fees, costs, and sanctions during the litigation.
In April 2023, the parties informed the court that they had reached a settlement in principle. An April 17 email from Judge Jones stated that it contained all material settlement terms and was binding and enforceable under Wisconsin law. St. Jude’s attorney responded, “Agreed.” The parties later disputed the terms of a formal settlement document, including whether it should contain a covenant not to sue. Niazi then moved to enforce the settlement, and St. Jude opposed the motion.
Legal standard
The court explained that it has authority to enforce a settlement agreement in a case pending before it. Wisconsin law governed the agreement. Under Wisconsin law, an agreement between parties or their attorneys must be written and signed by the attorneys, and an enforceable contract must be definite and certain as to its material terms.
Court’s analysis
The court held that the April 17 email satisfied Wisconsin’s writing requirement because it identified the material settlement terms. St. Jude’s attorney’s written response, “Agreed,” satisfied the requirement that the attorneys subscribe to the agreement.
The court also found that the parties’ April 20 joint letter, stating that they had agreed to settle the matter in principle, further confirmed their intent to be bound by the April 17 terms.
The court rejected St. Jude’s argument that the email was only an initial proposal. St. Jude’s unqualified written response objectively showed consent to the terms. The court held that St. Jude’s undisclosed or subjective intent to require a covenant not to sue did not control because its outward conduct showed agreement.
The court found that the covenant not to sue arose only after the mediation, when St. Jude sought to add it to the formal settlement document. The record did not show that the covenant had been negotiated as a material term during mediation or included in the April 17 email. The court therefore did not include the covenant in the settlement it enforced.
The court also held that later disputes during preparation of the formal settlement document did not invalidate the agreement formed on April 17. The mediator’s proposed revisions to the release did not alter or replace the original agreement because the parties had not mutually agreed to amend it.
Disposition
The court granted Niazi Licensing Corporation’s motion to enforce settlement. It enforced the settlement based on the original terms in Judge Jones’s April 17, 2023 email, rather than the mediator’s later proposals or St. Jude’s requested covenant not to sue. The court ordered judgment entered accordingly.
Read the full 12-page opinion on CourtListener, the free public archive maintained by the Free Law Project.