Niazi Licensing Corporation v. St. Jude Medical S.C., Inc.

U.S. District Court, District of Minnesota January 18, 2024

Trial Court Opinion

                 UNITED STATES DISTRICT COURT                            
                    DISTRICT OF MINNESOTA                                


Niazi Licensing Corporation,           Case No. 17-cv-5096 (WMW/DJF)     

                   Plaintiff,

ORDER

St. Jude Medical S.C., Inc.,

Defendant.

Before the Court is Plaintiff Niazi Licensing Corporation’s (“NLC”) motion to
enforce settlement. (Dkt. 421). For the reasons addressed below, the Court grants the
motion.
BACKGROUND
NLC owns United States Patent No. 6,638,268 (“the ’268 Patent”), which pertains
to a catheter system that can be inserted into the coronary sinus of the heart. The ’268
Patent also claims methods of using the catheter system.
NLC commenced this patent-infringement action against St. Jude in November
2017, alleging that St. Jude indirectly infringed the ’268 Patent by inducing its customers—
namely, medical professionals—to infringe the ’268 Patent. After this Court issued its
October 21, 2019 claim construction order, a single method claim remained in dispute:
claim 11 of the ’268 Patent, which claims a series of steps for “using a double catheter.”
The parties subsequently cross-moved for summary judgment. The Court concluded that
NLC failed to present evidence to prove two essential elements of its patent-infringement
claim—namely, that at least one person directly infringed the patented method and that St.
Jude knowingly induced infringement and possessed specific intent to encourage another’s

infringement. Accordingly, the Court denied NLC’s motion for summary judgment of
infringement and granted St. Jude’s motion for summary judgment of non-infringement.
NLC appealed.
While NLC’s appeal was pending, St. Jude moved for attorneys’ fees and costs,
arguing that NLC knew or should have known that its patent-infringement claims lacked
merit. In an October 25, 2021 Order (“Fees Order”), this Court granted St. Jude’s motion

in part. Although the Court rejected St. Jude’s argument that sanctions were warranted
under Rule 11, Fed. R. Civ. P., the Court found that “NLC engaged in bad-faith efforts to
prolong this litigation” after October 2019 and “chose repeatedly to engage in improper
tactics in an attempt to bolster the strength of its litigation position.” Based on these
findings, the Court concluded that NLC’s conduct was “exceptional” under

35 U.S.C. § 285

 and, consequently, that St. Jude is entitled to reasonable attorneys’ fees and costs it 
incurred  after  October  2019.    The  Court  also  found  that,  because  NLC’s  attorneys 
intentionally and recklessly disregarded their duties to the Court, NLC’s attorneys will be 
jointly and severally liable to personally satisfy an award of reasonable attorneys’ fees and 
costs, pursuant to

28 U.S.C. § 1927

.  The Court ordered the parties to file supplemental 

briefing as to the reasonable amount of attorneys’ fees and costs that should be awarded.  
Neither party appealed the Fees Order.                                    
    On November 24, 2021, St. Jude sought an award of $753,110.12 in attorneys’ fees 
and costs.  NLC opposed St. Jude’s requested amount, arguing that St. Jude seeks fees that 
are not recoverable and that the fees sought are unreasonably redundant and excessive.  
After the parties had fully briefed the attorneys’ fees issue, the United States Court of 

Appeals for the Federal Circuit issued a decision affirming in part, reversing in part, and 
remanding this case for further proceedings.  Niazi Licensing Corp. v. St. Jude Med. S.C., 
Inc.,

30 F.4th 1339, 1342

 (Fed. Cir. 2022).  In particular, the Federal Circuit reversed this 
Court’s  construction  of  several  claim  terms  in  the  ’268  Patent  and  this  Court’s 
determination that several claims in the ’268 Patent are invalid as indefinite.

Id. at 1346

.  
But the Federal Circuit affirmed this Court’s determination that St. Jude was entitled to 

summary judgment of no infringement as to claim 11 of the ’268 Patent.

Id. at 1352-53

.  
The Federal Circuit also affirmed this Court’s exclusion of expert testimony and imposition 
of sanctions against NLC for discovery violations.

Id. at 1353

.  In light of the Federal 
Circuit’s decision, NLC moved to vacate this Court’s Fees Order.          
    On August 26, 2022, this Court issued an order granting in part and denying in part 

NLC’s motion to vacate and granting in part and denying in part St. Jude’s request for 
attorneys’ fees and costs.  On September 22, 2022, NLC filed an appeal to the Federal 
Circuit on the August 26, 2022 order on motion for attorneys’ fees.       
    The Federal Circuit dismissed NLC’s appeal seeking to overturn sanctions imposed 
against them under

28 U.S.C. § 1927

 in its patent infringement case.  In an order dated 

December 28, 2022, the Federal Circuit held it lacked jurisdiction because the sanctions 
were not immediately appealable.  Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., No. 
2022-2271,

2022 WL 17972175

, at *1 (Fed. Cir. Dec. 28, 2022).  Following Supreme Court 
precedent  in  Cunningham  v. Hamilton  County,

527 U.S. 198, 210

  (1999)  (affirming 
dismissal for lack of jurisdiction over interlocutory appeal of a sanctions order against a 
party’s attorney), the Federal Circuit found that sanctions against attorneys in ongoing 

district court cases cannot be appealed until after a final judgment on the merits.

Id.

  The 
Federal Circuit rejected NLC’s argument, that as non-parties, they could immediately 
appeal, determining there was no meaningful difference between the Rule 37 sanctions 
addressed in Cunningham and Section 1927 sanctions that would allow an interlocutory 
appeal. Id. at *2.  Without a final judgment entered in the infringement case, the Federal 
Circuit dismissed the appeal for lack of jurisdiction.  Id.               

    On April 20, 2023, the parties filed a letter with the Court stating that the parties 
have reached a settlement in principle.  The magistrate judge ordered the parties to file a 
joint letter regarding the status of the settlement on or before June 22, 2023, if a stipulation 
of dismissal had not been filed by that date.  On June 22, 2023, the parties filed a letter 
indicating that no progress had been made and that the matter should be reinstated. The 

letter stated that NLC intended to file the present motion to enforce settlement.   
    On September 26, 2023, NLC filed a motion to enforce settlement.   St. Jude opposes 
the motion.                                                               
                           ANALYSIS                                      
    A district court has inherent power to enforce a settlement agreement in a case 

pending before the court.  Barry v. Barry,

172 F.3d 1011, 1013

 (8th Cir. 1999); Bergstrom 
v. Sears, Roebuck & Co.,

532 F. Supp. 923, 934

 (D. Minn. 1982).  “The power of a trial 
court to enter a judgment enforcing a settlement agreement has its basis in the policy 
favoring  the settlement  of  disputes  and the  avoidance  of  costly  and  time-consuming 
litigation.”  Bergstrom,

532 F. Supp. at 934

 (internal quotation marks omitted).  “The 
settlement of lawsuits is ‘greatly favored’ and settlements will not be lightly set aside.”  

Unitarian Universalist Church of Minnetonka v. City of Wayzata,

890 F. Supp. 2d 1119, 1124

 (D. Minn. 2012) (quoting Schumann v. Northtown Ins. Agency, Inc.,

452 N.W.2d 482, 483

 (Minn. Ct. App. 1990)).                                               
    Basic principles of contract law govern the enforcement of a settlement agreement.  
Chaganti & Assocs., P.C. v. Nowotny,

470 F.3d 1215, 1221

 (8th Cir. 2006).  A district 
court  has  “considerable  discretion”  when  determining  the  appropriate  procedure  for 

addressing a motion to enforce a settlement agreement, and a hearing is required “only if 
there are substantial questions of fact that are not already a matter of record.”  Barry,

172 F.3d at 1013

.                                                             
    Under Wisconsin law, which governs here, no agreement between the parties or 
their attorneys is binding unless made in writing and subscribed by the attorneys.

Wis. Stat. § 807.05

.  The subscription requirement can be satisfied by the inclusion of the attorney’s 
typed or printed name.  In re Est. of Johnson,

709 N.W.2d 88

, 91 (Wis. Ct. App. 2006). 
    For a contract to be enforceable, it must be definite and certain as to its material 
terms and requirements.  Paul R. Ponfil Trust v. Charmoli Holdings, LLC,

935 N.W.2d 308

, 311 (Wis. App. Sept. 18, 2019).  Courts have recognized that, from a defendant’s 

standpoint,  the  scope  of  the  release  is  often  the  most  material  term  in  a  settlement 
agreement.  Allscripts Healthcare, LLC v. Etransmedia Tech., Inc.,

448 F. Supp. 3d 898

, 
905-06 (N.D. Ill. 2019).                                                  
    I.   Writing Requirement                                             
    NLC argues that the April 17, 2023 email from Judge Jones constitutes a writing 

containing the terms of the settlement agreement as required by

Wis. Stat. § 807.05

.  The 
email states it contains “all [of] the material terms” of the parties’ settlement.  St. Jude’s 
attorney, Mr. Shah, responded “Agreed” to the email, which NLC argues satisfies the 
subscription requirement under Wisconsin law.                             
    St. Jude contends that the bullet point terms in Judge Jones’s email were merely an 
initial proposal and St. Jude did not agree to those terms alone.  However, as Mr. Shah 

responded “Agreed,” the evidence shows that St. Jude agreed in writing to the terms in 
Judge Jones’s email at the time.                                          
    The Court concludes that Judge Jones’s April 17, 2023 email satisfies the writing 
and subscription requirements under

Wis. Stat. § 807.05

 based on the email itself and St. 
Jude’s uncontested “Agreed” response in writing at the time.              

    II.  Subscription                                                    

    NLC argues that St.  Jude’s attorney, Mr.  Shah, responded “Agreed” to Judge 
Jones’s  April  17,  2023  email  setting  forth  the  settlement  terms,  which  constitutes 
subscription  under  Wisconsin  law.    For  this  reason,  NLC  contends  that  Mr.  Shah’s 
“Agreed” email satisfies the subscription requirement in

Wis. Stat. § 807.05

. 
    St. Jude does not dispute that Mr. Shah’s “Agreed” email satisfies the subscription 
requirement under Section 807.05 and Wisconsin law.                       
    The Court concludes that Mr. Shah’s “Agreed” email constitutes a subscription by 
St. Jude’s attorney under

Wis. Stat. § 807.05

 and satisfies this requirement of the statute. 
    III.  Subsequent Letter                                              
    NLC contends that the April 20, 2023 joint letter submitted by the parties to the 

Court, stating the parties have agreed to settle this matter in principle, provides additional 
evidence  confirming  the  settlement  agreement.    This  letter,  NLC  argues, which  was 
reviewed and signed by counsel for both parties, demonstrates their intent to be bound by 
the terms of the agreement memorialized in Judge Jones’s April 17, 2023 email.  St. Jude 
neither addresses the importance of the April 20, 2023 letter nor disputes that the letter 
shows both parties’ intent to settle pursuant to the terms in Judge Jones’s email.   

    The Court concludes that the April 20, 2023 letter jointly submitted by the parties 
further confirms their agreement to the settlement terms in Judge Jones’s April 17, 2023 
email.  The letter provides additional evidence of both parties’ intent to be bound by the 
terms of that agreement.                                                  
    IV.  Material Terms                                                  

    The parties dispute the meaning of Judge Jones’s April 17, 2023 email.  NLC argues 
that the language of the email establishes that St. Jude agreed the email contained all 
material terms of the settlement and was enforceable under

Wis. Stat. § 807.05

.  The email 
states “[t]he parties agree that this is a writing containing all of the material terms of their 
settlement and is therefore fully binding and enforceable under Wis. Stat. 807.05.”  By 

responding “Agreed” to the email, NLC contends, St. Jude consented to the enforceability 
of the agreement under

Wis. Stat. § 807.05

.                               
    St. Jude does not directly dispute that the email reflects the parties’ intent for the 
agreement to be enforceable under

Wis. Stat. § 807.05

.  St. Jude argues, however, that there 

was no mutual assent to the terms in the email.                           
    The Court concludes that the plain language in Judge Jones’s April 17, 2023 email, 
to which St. Jude agreed, reflects the parties’ intent and agreement that the settlement terms 
were enforceable under

Wis. Stat. § 807.05

.
V. Covenant Issue
NLC argues that the issue of whether to include a covenant not to sue in the

settlement agreement arose after the mediation, when St. Jude sought to add the covenant
when drafting the formal settlement document. A covenant not to sue was never discussed
during the mediation, NLC contends, and it is not included in the email reflecting the
parties’ agreement that Judge Jones sent.
St. Jude responds that it required a covenant not to sue to be part of any settlement

reached in mediation. However, St. Jude does not provide any declarations or evidence
demonstrating that the covenant not to sue was negotiated at the mediation or included as
a material term in Judge Jones’s email.
Based on the record, the Court concludes that the issue of whether to include a
covenant not to sue arose only after the mediation, when St. Jude sought to include it in the

formal settlement document. The evidence does not support the conclusion that the
covenant not to sue was negotiated as a material term during the mediation or that the
parties agreed that it would be part of the settlement under the terms in Judge Jones’s April
17, 2023 email.
VI. Post-Agreement Disputes
NLC contends that any disputes that arose when drafting the formal settlement

agreement during the period after the parties had reached an agreement on April 17, 2023
per Judge Jones’s email, are not relevant to the issue of enforceability. The only question,
NLC argues, as indicated by Judge Jones’s email and the parties’ conduct in confirming
the agreement, is whether the parties entered into a binding agreement on April 17, 2023.
St. Jude disagrees. St. Jude identifies disputes over the formal settlement terms,
particularly related to the covenant not to sue, as evidence that there was no meeting of the

minds.
The Court concludes that the parties’ disputes that arose later while drafting the
formal settlement document do not undermine the binding nature of the settlement
agreement reflected in Judge Jones’s April 17, 2023 email. At issue is whether the April
17, 2023 email and the parties’ conduct at the time establish that the parties entered into a

binding settlement agreement on that date. The email and conduct are sufficient to
demonstrate that a binding settlement agreement was formed between the parties on April
17, 2023. The subsequent disputes during the formal documentation process do not
invalidate the original agreement reached on April 17, 2023.
VII. Limited v. Material Terms

St. Jude contests whether it agreed to the “limited” terms contained in Judge Jones’s
April 17, 2023 email and maintains that St. Jude required any settlement to include a
covenant not to sue. According to St. Jude, the email terms were merely an initial proposal
that St. Jude rejected.
NLC points to the plain language of the email stating it contains “all material terms”
of the settlement and St. Jude’s unequivocal response, “Agreed.” NLC contends the

parties’ email communication demonstrates St. Jude’s acceptance of the terms in the April
17, 2023 email.
The Court concludes that the clear language of the April 17, 2023 email and St.
Jude’s “Agreed” response without any stated reservations, objectively demonstrate St.
Jude’s consent to the settlement terms in the email. St. Jude’s subjective intent to require
a covenant not to sue is not controlling where St. Jude’s outward conduct objectively

indicated consent. The Court, therefore, concludes that St. Jude agreed to the settlement
terms contained in Judge Jones’s April 17, 2023 email.
VIII. Mutual Assent
St. Jude argues there was no mutual assent between the parties on the limited terms
in Judge Jones’s April 17, 2023 email that NLC now seeks to enforce. St. Jude contends

the email terms were merely a proposal that it rejected.
In response, NLC points to St. Jude’s email stating “Agreed” as objective evidence
demonstrating St. Jude’s assent to the terms in Judge Jones’s email. St. Jude cannot now
claim it did not agree to those terms when it clearly stated “Agreed” in response to the
email, NLC contends.

St. Jude’s unambiguous “Agreed” email statement in response to Judge Jones’s
terms objectively manifests St. Jude’s assent to those settlement terms. St. Jude cannot
now claim, without any evidence, that it secretly intended to reject those terms when St.
Jude’s outward conduct and written statement expressed agreement. The Court concludes
that there was mutual assent between the parties to the settlement terms contained in Judge
Jones’s April 17, 2023 email.

IX. Subsequent Resolutions
If the Court enforces any settlement, St. Jude argues, the settlement should reflect
the mediator’s subsequent resolution of disputes that arose during drafting of the formal
agreement. Specifically, St. Jude contends that the Court should adopt the mediator’s
proposed revisions to the scope of the release.
NLC disagrees, arguing that the mediator’s subsequent involvement was solely to

assist the parties in drafting a formal document after they had reached an agreement. The
mediator’s proposed language is not binding without mutual assent of the parties, NLC
asserts.
Upon review, the Court concludes that the mediator’s proposed revisions to the
formal settlement document do not alter the binding nature of the parties’ original

agreement in Judge Jones’s April 17, 2023 email. There is no evidence that the parties
mutually consented to amend or modify the original terms of the agreement. The
mediator’s proposed language for the formal document does not supersede the parties’
prior agreement. The Court enforces the settlement based on the original terms in Judge
Jones’s April 17, 2023 email, not the mediator’s subsequent proposals for the formal

agreement draft.

ORDER

    Based on the foregoing analysis and all the files, records and proceedings herein, IT 

IS HEREBY ORDERED that Plaintiff Niazi Licensing Corporation’s motion to enforce 
settlement, (Dkt. 421), is GRANTED.                                       
    LET JUDGMENT BE ENTERED ACCORDINGLY.                                 

Dated:  January 18, 2024                 s/ Wilhelmina M. Wright                                     
                                       Wilhelmina M. Wright              
                                       United States District Judge

Trial Court Opinion

                 UNITED STATES DISTRICT COURT                            
                    DISTRICT OF MINNESOTA                                


Niazi Licensing Corporation,           Case No. 17-cv-5096 (WMW/DJF)     

                   Plaintiff,

ORDER

St. Jude Medical S.C., Inc.,

Defendant.

35 U.S.C. § 285

 and, consequently, that St. Jude is entitled to reasonable attorneys’ fees and costs it 
incurred  after  October  2019.    The  Court  also  found  that,  because  NLC’s  attorneys 
intentionally and recklessly disregarded their duties to the Court, NLC’s attorneys will be 
jointly and severally liable to personally satisfy an award of reasonable attorneys’ fees and 
costs, pursuant to

28 U.S.C. § 1927

.  The Court ordered the parties to file supplemental 

briefing as to the reasonable amount of attorneys’ fees and costs that should be awarded.  
Neither party appealed the Fees Order.                                    
    On November 24, 2021, St. Jude sought an award of $753,110.12 in attorneys’ fees 
and costs.  NLC opposed St. Jude’s requested amount, arguing that St. Jude seeks fees that 
are not recoverable and that the fees sought are unreasonably redundant and excessive.  
After the parties had fully briefed the attorneys’ fees issue, the United States Court of 

Appeals for the Federal Circuit issued a decision affirming in part, reversing in part, and 
remanding this case for further proceedings.  Niazi Licensing Corp. v. St. Jude Med. S.C., 
Inc.,

30 F.4th 1339, 1342

 (Fed. Cir. 2022).  In particular, the Federal Circuit reversed this 
Court’s  construction  of  several  claim  terms  in  the  ’268  Patent  and  this  Court’s 
determination that several claims in the ’268 Patent are invalid as indefinite.

Id. at 1346

.  
But the Federal Circuit affirmed this Court’s determination that St. Jude was entitled to 

summary judgment of no infringement as to claim 11 of the ’268 Patent.

Id. at 1352-53

.  
The Federal Circuit also affirmed this Court’s exclusion of expert testimony and imposition 
of sanctions against NLC for discovery violations.

Id. at 1353

.  In light of the Federal 
Circuit’s decision, NLC moved to vacate this Court’s Fees Order.          
    On August 26, 2022, this Court issued an order granting in part and denying in part 

NLC’s motion to vacate and granting in part and denying in part St. Jude’s request for 
attorneys’ fees and costs.  On September 22, 2022, NLC filed an appeal to the Federal 
Circuit on the August 26, 2022 order on motion for attorneys’ fees.       
    The Federal Circuit dismissed NLC’s appeal seeking to overturn sanctions imposed 
against them under

28 U.S.C. § 1927

 in its patent infringement case.  In an order dated 

December 28, 2022, the Federal Circuit held it lacked jurisdiction because the sanctions 
were not immediately appealable.  Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., No. 
2022-2271,

2022 WL 17972175

, at *1 (Fed. Cir. Dec. 28, 2022).  Following Supreme Court 
precedent  in  Cunningham  v. Hamilton  County,

527 U.S. 198, 210

  (1999)  (affirming 
dismissal for lack of jurisdiction over interlocutory appeal of a sanctions order against a 
party’s attorney), the Federal Circuit found that sanctions against attorneys in ongoing 

district court cases cannot be appealed until after a final judgment on the merits.

Id.

  The 
Federal Circuit rejected NLC’s argument, that as non-parties, they could immediately 
appeal, determining there was no meaningful difference between the Rule 37 sanctions 
addressed in Cunningham and Section 1927 sanctions that would allow an interlocutory 
appeal. Id. at *2.  Without a final judgment entered in the infringement case, the Federal 
Circuit dismissed the appeal for lack of jurisdiction.  Id.               

    On April 20, 2023, the parties filed a letter with the Court stating that the parties 
have reached a settlement in principle.  The magistrate judge ordered the parties to file a 
joint letter regarding the status of the settlement on or before June 22, 2023, if a stipulation 
of dismissal had not been filed by that date.  On June 22, 2023, the parties filed a letter 
indicating that no progress had been made and that the matter should be reinstated. The 

letter stated that NLC intended to file the present motion to enforce settlement.   
    On September 26, 2023, NLC filed a motion to enforce settlement.   St. Jude opposes 
the motion.                                                               
                           ANALYSIS                                      
    A district court has inherent power to enforce a settlement agreement in a case 

pending before the court.  Barry v. Barry,

172 F.3d 1011, 1013

 (8th Cir. 1999); Bergstrom 
v. Sears, Roebuck & Co.,

532 F. Supp. 923, 934

 (D. Minn. 1982).  “The power of a trial 
court to enter a judgment enforcing a settlement agreement has its basis in the policy 
favoring  the settlement  of  disputes  and the  avoidance  of  costly  and  time-consuming 
litigation.”  Bergstrom,

532 F. Supp. at 934

 (internal quotation marks omitted).  “The 
settlement of lawsuits is ‘greatly favored’ and settlements will not be lightly set aside.”  

Unitarian Universalist Church of Minnetonka v. City of Wayzata,

890 F. Supp. 2d 1119, 1124

 (D. Minn. 2012) (quoting Schumann v. Northtown Ins. Agency, Inc.,

452 N.W.2d 482, 483

 (Minn. Ct. App. 1990)).                                               
    Basic principles of contract law govern the enforcement of a settlement agreement.  
Chaganti & Assocs., P.C. v. Nowotny,

470 F.3d 1215, 1221

 (8th Cir. 2006).  A district 
court  has  “considerable  discretion”  when  determining  the  appropriate  procedure  for 

addressing a motion to enforce a settlement agreement, and a hearing is required “only if 
there are substantial questions of fact that are not already a matter of record.”  Barry,

172 F.3d at 1013

.                                                             
    Under Wisconsin law, which governs here, no agreement between the parties or 
their attorneys is binding unless made in writing and subscribed by the attorneys.

Wis. Stat. § 807.05

.  The subscription requirement can be satisfied by the inclusion of the attorney’s 
typed or printed name.  In re Est. of Johnson,

709 N.W.2d 88

, 91 (Wis. Ct. App. 2006). 
    For a contract to be enforceable, it must be definite and certain as to its material 
terms and requirements.  Paul R. Ponfil Trust v. Charmoli Holdings, LLC,

935 N.W.2d 308

, 311 (Wis. App. Sept. 18, 2019).  Courts have recognized that, from a defendant’s 

standpoint,  the  scope  of  the  release  is  often  the  most  material  term  in  a  settlement 
agreement.  Allscripts Healthcare, LLC v. Etransmedia Tech., Inc.,

448 F. Supp. 3d 898

, 
905-06 (N.D. Ill. 2019).                                                  
    I.   Writing Requirement                                             
    NLC argues that the April 17, 2023 email from Judge Jones constitutes a writing 

containing the terms of the settlement agreement as required by

Wis. Stat. § 807.05

.  The 
email states it contains “all [of] the material terms” of the parties’ settlement.  St. Jude’s 
attorney, Mr. Shah, responded “Agreed” to the email, which NLC argues satisfies the 
subscription requirement under Wisconsin law.                             
    St. Jude contends that the bullet point terms in Judge Jones’s email were merely an 
initial proposal and St. Jude did not agree to those terms alone.  However, as Mr. Shah 

responded “Agreed,” the evidence shows that St. Jude agreed in writing to the terms in 
Judge Jones’s email at the time.                                          
    The Court concludes that Judge Jones’s April 17, 2023 email satisfies the writing 
and subscription requirements under

Wis. Stat. § 807.05

 based on the email itself and St. 
Jude’s uncontested “Agreed” response in writing at the time.              

    II.  Subscription                                                    

    NLC argues that St.  Jude’s attorney, Mr.  Shah, responded “Agreed” to Judge 
Jones’s  April  17,  2023  email  setting  forth  the  settlement  terms,  which  constitutes 
subscription  under  Wisconsin  law.    For  this  reason,  NLC  contends  that  Mr.  Shah’s 
“Agreed” email satisfies the subscription requirement in

Wis. Stat. § 807.05

. 
    St. Jude does not dispute that Mr. Shah’s “Agreed” email satisfies the subscription 
requirement under Section 807.05 and Wisconsin law.                       
    The Court concludes that Mr. Shah’s “Agreed” email constitutes a subscription by 
St. Jude’s attorney under

Wis. Stat. § 807.05

 and satisfies this requirement of the statute. 
    III.  Subsequent Letter                                              
    NLC contends that the April 20, 2023 joint letter submitted by the parties to the 

Court, stating the parties have agreed to settle this matter in principle, provides additional 
evidence  confirming  the  settlement  agreement.    This  letter,  NLC  argues, which  was 
reviewed and signed by counsel for both parties, demonstrates their intent to be bound by 
the terms of the agreement memorialized in Judge Jones’s April 17, 2023 email.  St. Jude 
neither addresses the importance of the April 20, 2023 letter nor disputes that the letter 
shows both parties’ intent to settle pursuant to the terms in Judge Jones’s email.   

    The Court concludes that the April 20, 2023 letter jointly submitted by the parties 
further confirms their agreement to the settlement terms in Judge Jones’s April 17, 2023 
email.  The letter provides additional evidence of both parties’ intent to be bound by the 
terms of that agreement.                                                  
    IV.  Material Terms                                                  

    The parties dispute the meaning of Judge Jones’s April 17, 2023 email.  NLC argues 
that the language of the email establishes that St. Jude agreed the email contained all 
material terms of the settlement and was enforceable under

Wis. Stat. § 807.05

.  The email 
states “[t]he parties agree that this is a writing containing all of the material terms of their 
settlement and is therefore fully binding and enforceable under Wis. Stat. 807.05.”  By 

responding “Agreed” to the email, NLC contends, St. Jude consented to the enforceability 
of the agreement under

Wis. Stat. § 807.05

.                               
    St. Jude does not directly dispute that the email reflects the parties’ intent for the 
agreement to be enforceable under

Wis. Stat. § 807.05

.  St. Jude argues, however, that there 

was no mutual assent to the terms in the email.                           
    The Court concludes that the plain language in Judge Jones’s April 17, 2023 email, 
to which St. Jude agreed, reflects the parties’ intent and agreement that the settlement terms 
were enforceable under

Wis. Stat. § 807.05

.
V. Covenant Issue
NLC argues that the issue of whether to include a covenant not to sue in the

agreement draft.

ORDER

    Based on the foregoing analysis and all the files, records and proceedings herein, IT 

IS HEREBY ORDERED that Plaintiff Niazi Licensing Corporation’s motion to enforce 
settlement, (Dkt. 421), is GRANTED.                                       
    LET JUDGMENT BE ENTERED ACCORDINGLY.                                 

Dated:  January 18, 2024                 s/ Wilhelmina M. Wright                                     
                                       Wilhelmina M. Wright              
                                       United States District Judge

Reference

Status: Unknown