Neuroptics, Inc. v. Brightlamp, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
NEUROPTICS, INC.,
Plaintiff-Appellant
v.
BRIGHTLAMP, INC.,
Defendant-Appellee
______________________
2022-1059
______________________
Appeal from the United States District Court for the
Southern District of Indiana in No. 1:19-cv-04832-JMS-
MG, Judge Jane Magnus-Stinson.
______________________
Decided: February 17, 2023
______________________
P ETER R. AFRASIABI , One LLP, Newport Beach, CA, ar-
gued for plaintiff-appellant. Also represented by N A-
THANIEL L. D ILGER.
ALLAN J. STERNSTEIN, Intellectual Property Clinic, In-
diana University Mauer School of Law, Bloomington, IN,
argued for defendant-appellee.
______________________
Before L OURIE, T ARANTO, and STARK, Circuit Judges.
Case: 22-1059 Document: 48 Page: 1 Filed: 02/17/2023

-- 1 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 2
STARK, Circuit Judge.
NeurOptics, Inc. and Brightlamp, Inc. do not agree on
whether they agreed. So now they are litigating over
whether they should continue litigating. Because we agree
with the district court that the parties entered into a bind-
ing settlement agreement, we affirm that court’s dismissal
of this patent infringement case – notwithstanding our dis-
agreement with the district court as to the scope of the par-
ties’ settlement.
I
NeurOptics, Inc. (“NeurOptics”) manufactures pupil-
lometers, which are devices that measure pupil size and an
eye’s response to light. Brightlamp, Inc. (“Brightlamp”)
produces a smartphone application, named Reflex, with
pupillometer functionality. NeurOptics believes Bright-
lamp’s Reflex infringes one or more of NeurOptics’ patents.
On March 27, 2019, NeurOptics sent a cease-and-desist
letter to Brightlamp’s Chief Executive Officer (“CEO”),
Kurtis Sluss. In its letter, NeurOptics notified Brightlamp
of its view that Reflex infringes “multiple NeurOptics pa-
tents,” adding that NuerOptics “holds an extensive and
wide-reaching intellectual property portfolio that is fo-
cused on protecting all aspects of NeurOptics’ pupillometer
technology.” J.A. 217. The letter listed twenty-two U.S.
patents NeurOptics considers to be part of its “extensive
patent portfolio protecting its pupillometer technology.”
J.A. 217-19.
NeurOptics expressly accused Brightlamp of infringing
two of those patents: U.S. Patent Nos. 9,402,542 (the “’542
patent”) and 6,820,979 (the “’979 patent”). J.A. 219-20. We
will refer to the ’542 and ’979 patents collectively as the
“Two Asserted Patents.” The letter provided claim charts
comparing the limitations of one claim from each of the
Two Asserted Patents to Brightlamp’s Reflex product. The
letter emphasized that the two charted claims were “only
Case: 22-1059 Document: 48 Page: 2 Filed: 02/17/2023

-- 2 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 3
exemplary” and “not intended to be an exhaustive explana-
tion of the patents or claims infringed by Brightlamp’s Re-
flex product.” J.A. 222. NeurOptics went on to state that
it “in fact believes that the Reflex product unquestionably
infringes . . . additional NeurOptics Patents.” J.A. 222. Fi-
nally, it urged Brightlamp, “[i]n choosing your next steps,”
to “review not only the claims found in the ’542 and ’979
patents, but also the claims found in U.S. Patent No.
6,116,736; 6,260,968; 7,147,327; 7,670,002; and 8,235,526.”
J.A. 222. We will refer to these five patents as the “Five
Additional Patents.” Each of the Two Asserted Patents and
the Five Additional Patents, which all descend from the
same patent application, expired on or before August 1,
2021. The Two Asserted Patents, the Five Additional Pa-
tents, and the other fifteen patents listed in the NeurOptics
letter (which we will refer to as the “Fifteen More Patents”)
together make up the twenty-two patents NeurOptics noti-
fied Brightlamp of in its letter.
On December 6, 2019, NeurOptics sued Brightlamp.
The complaint alleged that Brightlamp infringed “at least”
the ’542 and ’979 patents, defining these Two Asserted Pa-
tents as the “Asserted Patents.” J.A. 2 ¶ 4; see also J.A. 46
(case management plan repeating allegation that Bright-
lamp has infringed “at least” the Two Asserted Patents).
As support, the complaint included claim charts “com-
par[ing] Reflex’s function and operation against repre-
sentative claims” of the Two Asserted Patents. J.A. 4-8 ¶
13. The complaint culminated in two (and only two) claims
for relief: one alleging infringement of the ’542 patent and
the other alleging infringement of the ’979 patent. As re-
lief, NeurOptics sought “[a]n adjudication that Defendant
has willfully infringed and continues to infringe the ’542
Patent and ‘979 Patent,” without referring to any other pa-
tent. J.A. 13.
While the complaint made explicit allegations of in-
fringement of just the Two Asserted Patents – it contained
no claim charts for any other patent nor any claim for relief
Case: 22-1059 Document: 48 Page: 3 Filed: 02/17/2023

-- 3 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 4
based on any other patent – it also stated that the two
claim charts were “only exemplary” and “not intended to be
an exhaustive explanation of the infringed patents or
claims.” J.A. 8 ¶14. Much like the earlier notice letter sent
to Brightlamp, paragraph 14 of the complaint stated:
NeurOptics in fact believes that
the Reflex pupillometer has
likely infringed additional
claims from both the [Two As-
serted Patents] and may have
infringed various claims from
additional NeurOptics patents,
including potentially [the Five
Additional Patents]. As Neu-
rOptics completes its investiga-
tion, it expects to amend this
complaint to identify any addi-
tional infringed patents.
J.A. 8 ¶14.
In due course, Brightlamp filed an answer, denying in-
fringement, and counterclaims for declaratory judgments
of non-infringement, invalidity, and unenforceability of the
Two Asserted Patents (as well alleging that NeurOptics vi-
olated the Sherman Act). Brightlamp also filed a motion to
strike the portions of the complaint alleging it infringed
any patents other than the ’542 and ’979 patents (including
the portion of the complaint excerpted above). In opposing
the motion, NeurOptics explained that “the challenged lan-
guage,” that is, paragraph 14, “is not an allegation of pa-
tent infringement” but, instead, “states only that
NeurOptics intends to do that which the law explicitly al-
lows, i.e., investigate whether it has additional infringed
patents and – if it does – to amend its complaint to assert
those patents.” J.A. 447-48. The district court denied the
motion.
Case: 22-1059 Document: 48 Page: 4 Filed: 02/17/2023

-- 4 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 5
NeurOptics never did amend its complaint. Both par-
ties agree the case has never involved any allegation of in-
fringement of any patents other than (at most) the Two
Asserted Patents and the Five Additional Patents.
In May 2020, the parties began discussing a possible
settlement. Specifically, on May 15, 2020, NeurOptics’ at-
torney, Nathaniel L. Dilger, sent a letter to Brightlamp’s
attorney, Norman J. Hedges, providing “[t]he following set-
tlement demand:”
1. For a period of 6 years, Bright-
lamp will agree to neither mar-
ket nor knowingly offer for sale
or sell its accused pupilometer
application to hospitals or li-
censed medical professionals.
2. Brightlamp will pay NeurOptics
$7,500[].
3. In return for the above, NeurOp-
tics will covenant not to sue
Brightlamp on NeurOptic[s]’[]
pupillometer patent portfolio,
subject to the field of use re-
striction above.
4. The parties will dismiss with
prejudice all claims and counter-
claims, with each side bearing
its own costs and fees.
J.A. 107 (emphasis added).1
We have highlighted the term “NeurOptics’ pupillome-
ter patent portfolio,” which is the term at the center of the
1 The parties used “pupilometer” and “pupillometer”
interchangeably in their communications.
Case: 22-1059 Document: 48 Page: 5 Filed: 02/17/2023

-- 5 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 6
parties’ dispute on appeal. The parties continued to use
this term throughout their negotiations but, as we explain
further below, never discussed it until after they had al-
ready reached an agreement.
On July 20, 2020, the district court granted Bright-
lamp’s motion for a discovery conference and scheduled the
conference for a week later, on July 27. This seems to have
spurred renewed attention to their settlement efforts as
the parties’ CEOs negotiated directly with one another over
the following days. On July 22, 2020, NeurOptics’ CEO,
William Worthen, emailed a revision of NeurOptics’ May
settlement demand to Brightlamp CEO Sluss. The next
day, July 23, Sluss sent back the following modified pro-
posal to Worthen:
1. Brightlamp will agree to neither
market to hospitals nor know-
ingly offer for sale or sell its ac-
cused pupilometer application to
hospitals, up to the expiration of
the patents-in-suit (i.e. August
1, 2021).
2. In return for the above, NeurOp-
tics will (a) forego its claim for
damages and (b) covenant not to
sue Brightlamp on NeurOptics’
pupillometer patent portfolio,
subject to the field of use re-
striction above.
3. Brightlamp to pay NeurOptics
$2,500.
4. Both parties will dismiss with
prejudice all claims and counter-
claims, with each side bearing
its own costs and fees.
Case: 22-1059 Document: 48 Page: 6 Filed: 02/17/2023

-- 6 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 7
J.A. 114 (emphasis added). Sluss concluded his message
with “[p]lease let me know if we’re in agreement so I can
forward this on to my counsel.” J.A. 114.
The next day, July 24, NeurOptics’ Worthen responded
by addressing only the financial term of Sluss’ offer, para-
graph 3, writing: “$4k and we[’]re done/good to go.” J.A.
113. Sluss counteroffered: “If you can agree to $3,000 then
we can wrap this up.” J.A. 113. Worthen responded “Ok,”
to which Sluss replied: “Thanks, happy we can come to an
arrangement.” J.A. 112 (emphasis added). Sluss then
listed his understanding of the agreed-upon terms, which
he indicated he would be sending to Brightlamp’s legal
team:
1. Brightlamp will agree to neither
market to hospitals nor know-
ingly offer for sale or sell its ac-
cused pupilometer application to
hospitals, up to the expiration of
the patents-in-suit (i.e August 1,
2021).
2. In return for the above, NeurOp-
tics will (a) forego its claim for
damages and (b) covenant not to
sue Brightlamp on NeurOptics’
pupillometer patent portfolio,
subject to the field of use re-
striction above.
3. Brightlamp to pay NeurOptics
$3,000.
4. Both parties will dismiss with
prejudice all claims and counter-
claims, with each side bearing
its own costs and fees.
J.A. 112 (emphasis added). We refer to these terms as the
“July 24 Agreement.” Worthen did not reply, but instead
Case: 22-1059 Document: 48 Page: 7 Filed: 02/17/2023

-- 7 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 8
forwarded the terms to NeurOptics’ counsel, Dilger, who
suggested to Brightlamp’s counsel that together “we con-
tact Chambers and let them know that we’ve reached agree-
ment and expect to be filing a notice of dismissal once we
finalize the paperwork.” J.A. 289 (emphasis added).
Counsel for the parties then called the district court to
ask it to cancel the discovery conference, which was only
one business day away. The district court did so, stating in
its order that it had been “advised by counsel that a settle-
ment has been reached in this action.” J.A. 463. The court
further ordered that, within 30 days, “the plaintiff shall file
a motion to dismiss this cause or a stipulation of dismissal.”
J.A. 463. NeurOptics never filed either type of document.
Instead, the parties’ efforts to execute formal settlement
documents failed.
NeurOptics attorney Dilger sent a “draft settlement
agreement” to Brightlamp attorney Hedges on August 5.
After noting in the recitals that NeurOptics alleged in the
litigation that “certain of Brightlamp’s products infringe”
the Two Asserted Patents, and that both parties “wish . . .
to settle any dispute between them regarding alleged in-
fringement of” those Two Asserted Patents, the draft
agreement released Brightlamp and covenanted not to sue
Brightlamp on “the NeurOptics Patents,” which the draft
defined as the Two Asserted Patents plus “any and all Pa-
tents existing or subsequently issuing from applications
from which an Asserted Patent [i.e., the Two Asserted Pa-
tents] claims priority.” J.A. 241. That definition covers the
Two Asserted Patents and the Five Additional Patents but
does not cover the Fifteen More Patents.
The next day, Hedges, for Brightlamp, responded with
a redline that reduced the proposed agreement to basically
just the language Brightlamp CEO Sluss had provided as
his understanding of the material terms in his July 24 con-
firmatory email, including a “covenant not to sue Bright-
lamp on NeurOptics’ pupillometer patent portfolio,”
Case: 22-1059 Document: 48 Page: 8 Filed: 02/17/2023

-- 8 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 9
without defining the scope of that portfolio. J.A. 249-50
(emphasis added). Later that same day, Dilger, on behalf
of NeurOptics, rejected this truncated version as “unac-
ceptable,” contending it “le[ft] numerous terms open,” but
without identifying any specific open terms. J.A. 254.
Hedges replied on August 11 that his proposal was “ex-
actly what was agreed by the parties.” J.A. 254. He further
expressed his belief that “all issues are addressed and
asked NeurOptics to identify “any terms in our agreement
that you believe are left open.” J.A. 254. The attorneys for
the two sides apparently spoke again on August 25. J.A.
308. On August 28, Brightlamp sent NeurOptics a
marked-up version of the August 5 draft settlement agree-
ment NeurOptics had proposed. As relevant to us, this
mark-up changed NeurOptics’ draft so that NeurOptics
would be agreeing not to sue Brightlamp on claims arising
from the “NeurOptics Pupilometer Patent Portfolio,” which
Brightlamp’s draft defined as “any and all patents owned
by NeurOptics as of the Effective Date that cover pupilome-
ter products or components thereof, or the Accused Prod-
ucts,” which would have expanded the scope of the
covenant from what NeurOptics had proposed. NeurOptics
had limited the covenant not to sue to the “NeurOptics Pa-
tents,” which, as we have already noted, was defined in a
manner that included the Two Asserted Patents and the
Five Additional Patents but not the Fifteen More Patents.
J.A. 281, 308. The Brightlamp proposal did not lead to any
resolution between the parties.
On September 23, 2020, Brightlamp filed a motion to
enforce the settlement agreement and to dismiss the ac-
tion. NeurOptics opposed, insisting that because the par-
ties had not agreed on the scope of the “NeurOptics’
pupillometer patent portfolio,” which was an essential
term, there was no agreement. The district court denied
the motion without prejudice, to allow the parties to confer
with a magistrate judge in an attempt to reach an amicable
disposition. When the discussions proved unfruitful,
Case: 22-1059 Document: 48 Page: 9 Filed: 02/17/2023

-- 9 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 10
Brightlamp brought a renewed motion to enforce the set-
tlement agreement and to dismiss the case. This time the
district court granted the motion, finding the parties had
entered into a valid, binding, and enforceable settlement
agreement.
In doing so, the district court explained that the dis-
pute before it was whether there had been a meeting of the
minds as to which patents NeurOptics agreed it would not
sue Brightlamp on and on which it would release Bright-
lamp from any potential liability. NeurOptics argued it
had only intended to release Brightlamp with respect to
“any and all Patents existing or subsequently issuing from
applications from which an Asserted Patent claims prior-
ity,” which is the definition NeurOptics had included in its
August 5 draft agreement, and which corresponds to the
Two Asserted Patents and the Five Additional Patents.
J.A. 257. In contrast, Brightlamp proposed that the release
and covenant not to sue included “any and all patents
owned by NeurOptics . . . that cover pupilometer products
or components thereof, or the Accused Products,” the defi-
nition it had written into its August 28 draft. J.A. 364.
The district court concluded that “[n]one of the evi-
dence presented supports NeurOptics’ contention that the
parties had differing intentions regarding the covenant not
to sue during the discussions leading up to the July 24,
2020 email agreement.” J.A. 363. As part of its decision,
the district court determined that the unambiguous mean-
ing of the disputed term “NeurOptics’ pupillometer patent
portfolio” is “the range or collection of pupillometer patents
possessed by NeurOptics” but that the term did not extend
to “patents for components of pupillometers, rather than
pupillometers themselves.” J.A. 343-44. This definition
appears to have been broader than what NeurOptics ar-
gued for but somewhat narrower than what Brightlamp
proposed. It plainly included the Two Asserted Patents
and the Five Additional Patents but its scope beyond those
seven patents is unclear.
Case: 22-1059 Document: 48 Page: 10 Filed: 02/17/2023

-- 10 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 11
The district court entered final judgment and NeurOp-
tics timely appealed.2
II
We apply the law of the regional circuit, here the Sev-
enth Circuit, to issues not unique to our exclusive jurisdic-
tion. See Sanofi-Aventis v. Apotex Inc., 659 F.3d 1171, 1178
(Fed. Cir. 2011). Enforcement of a settlement agreement is
one such issue. See id. Seventh Circuit law, in turn, directs
us to apply Indiana state contract law to NeurOptics’ chal-
lenge to enforcement of a settlement agreement. See Bev-
erly v. Abbott Labs., 817 F.3d 328, 333 (7th Cir. 2016).
We also look to Seventh Circuit law for the appropriate
standards of review. See Sokol Crystal Prod., Inc. v. DSC
Commc’ns Corp., 15 F.3d 1427, 1432 (7th Cir. 1994).
Whether a contract exists presents a question of law we re-
view de novo. See Newkirk v. Vill. of Steger, 536 F.3d 771,
774 (7th Cir. 2008). We review any underlying factual find-
ings for clear error. See ReMapp Int’l Corp. v. Comfort Key-
board Co., 560 F.3d 628, 633 (7th Cir. 2009). Indiana law
recognizes that intent determinations, including assess-
ments of the intentions of parties to a purported contract,
are factual. See Zimmerman v. McColley, 826 N.E.2d 71,
77 (Ind. Ct. App. 2005) (“The intention of the parties to a
contract is a factual matter to be determined from all the
circumstances.”). If we determine a settlement agreement
exists, we review the decision to enforce that agreement for
abuse of discretion. See Wilson v. Wilson, 46 F.3d 660, 664
(7th Cir. 1995).
2 The district court had subject-matter jurisdiction
under 28 U.S.C. § 1338. We have jurisdiction over the ap-
peal under 28 U.S.C. § 1295(a).
Case: 22-1059 Document: 48 Page: 11 Filed: 02/17/2023

-- 11 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 12
III
NeurOptics’ appeal presents two issues for us to ad-
dress. First, we must determine whether the parties en-
tered into an enforceable settlement agreement. We agree
with the district court that they did, as the record evidence
supports the conclusion that as of July 24 the parties had
a shared intent to resolve their patent infringement dis-
pute and reached agreement to do so. Second, we must as-
sess whether the district court abused its discretion in
enforcing the July 24 agreement and dismissing the par-
ties’ claims and counterclaims. We find that it did not. The
scope of the covenant not to sue and release – which turns
on the meaning of “pupillometer patent portfolio” – is suf-
ficiently definite to allow a reasonable and logical interpre-
tation. As we explain, it includes only the Two Asserted
Patents and the Five Additional Patents.
A
Under Indiana law “[t]he basic requirements for a con-
tract are offer, acceptance, consideration, and a meeting of
the minds of the contracting parties.” Conwell v. Gray
Loon Outdoor Mktg. Grp., Inc., 906 N.E.2d 805, 812-13
(Ind. 2009). The parties do not dispute that the first three
elements – offer, acceptance, and consideration – are pre-
sent here. Thus, the question of whether there is a binding
contract to settle this case turns on whether there was a
meeting of the minds. This requirement is satisfied if the
parties had the same intent in forming the agreement. See
Zimmerman, 826 N.E.2d at 77. To evaluate this issue, we
limit our analysis to the objective manifestations of the
parties, including the contract and other extrinsic evi-
dence, such as the parties’ statements during negotiations;
subjective intent is immaterial. See id.
NeurOptics insists there was no meeting of the minds
because the parties did not have a shared understanding
as to the meaning of “pupillometer patent portfolio.”
Therefore, NeurOptics contends, there was no meeting of
Case: 22-1059 Document: 48 Page: 12 Filed: 02/17/2023

-- 12 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 13
the minds on the essential term of the agreement’s release
and covenant not to sue. In the view of NeurOptics, the
purported agreement is ambiguous as to whether the par-
ties intended to settle disputes solely with respect to the
Two Asserted Patents, the Five Additional Patents, and/or
the Fifteen More Patents.
We disagree. Our review of the objective manifesta-
tions of the parties’ intentions persuades us, as it did the
district court, that there was a meeting of the minds. In
particular, the series of written documents exchanged be-
tween the parties consistently demonstrate that both Neu-
rOptics and Brightlamp intended that NeurOptics would
release and covenant not to sue Brightlamp for infringe-
ment of the Two Asserted Patents and of the Five Addi-
tional Patents. The record shows that the parties mutually
understood during their interactions leading up to and cul-
minating in the July 24 Agreement that “pupillometer pa-
tent portfolio” meant the Two Asserted Patents plus the
Five Additional Patents. In short, the record evidence re-
peatedly shows that the CEOs both intended to resolve the
patent disputes that were potentially at issue in this litiga-
tion and that those disputes related to these seven patents,
and only these seven patents.
When NeurOptics first contacted Brightlamp with its
March 2019 letter, it provided notice that the Reflex prod-
uct infringes “multiple NeurOptics patents” and charted
how the Two Asserted Patents were allegedly infringed.
J.A. at 217-22. While NeurOptics listed a total of twenty-
two of its patents, including the Fifteen More Patents, it
specifically urged Brightlamp to “review not only the
claims found in the [Two Asserted Patents], but also the
claims found in [the Five Additional Patents].” J.A. at 222.
NeurOptics was communicating to Brightlamp that while
it had an extensive patent portfolio, the patents it was most
likely to assert against the Reflex were the Two Asserted
Patents and the Five Additional patents.
Case: 22-1059 Document: 48 Page: 13 Filed: 02/17/2023

-- 13 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 14
When NeurOptics filed suit in December 2019, its con-
centration on the Two Asserted Patents and Five Addi-
tional Patents grew even stronger. The Two Asserted
Patents and the Five Additional Patents are expressly ref-
erenced in all the key documents filed in this litigation, in-
cluding the complaint, answer and counterclaims, and
motion to strike. NeurOptics formally accused Brightlamp
of infringing only the Two Asserted Patents and also ex-
plicitly identified, in the complaint, the Five Additional Pa-
tents as patents Brightlamp “may have infringed” and for
which it might add infringement claims in an amended
complaint. J.A. 8. Brightlamp’s motion to strike was di-
rected to this very statement, as Brightlamp tried – but
failed – to limit the scope of this litigation to just the Two
Asserted Patents.
As to the Fifteen More Patents, they are not referenced
in the complaint or in any other litigation document to
which the parties have pointed us. We see no evidence that
NeurOptics ever actually alleged that Brightlamp’s Reflex
product infringes any claim in any of the Fifteen More Pa-
tents. We cannot find any references in the record to these
additional patents after the March 2019 notice letter. Dur-
ing the course of negotiations leading up to the July 24
Agreement, there is simply no objective manifestation of
any intent by either party to enter into a release and cove-
nant not to sue with respect to the Fifteen More Patents or
with respect to any other patents NeurOptics might hold.
Any undisclosed subjective intent Brightlamp might have
privately held is not relevant to our inquiry. The district
court’s conclusion that the parties intended to settle with
respect to patents other than the Two Asserted Patents and
the Five Additional Patents – including, potentially, the
Fifteen More Patents – is, therefore, clearly erroneous.
In sum, this case was always about the Two Asserted
Patents as well as the Five Additional Patents. No effec-
tive settlement agreement could have addressed anything
less than these seven patents. As far as the record reveals,
Case: 22-1059 Document: 48 Page: 14 Filed: 02/17/2023

-- 14 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 15
the negotiations between the CEOs that led to the agree-
ment to settle did not involve any discussion of the full
scope of the term “pupillometer patent portfolio.” The cor-
respondence between the two parties’ CEOs does not evince
any disagreement or confusion about the scope of the pro-
posed release and covenant not to sue. Dilger, NeurOptics’
attorney, used the term “NeurOptics’ pupillometer patent
portfolio” in his initial settlement offer, without providing
a definition or offering clarifying language, and this same
term appeared in nearly every proposal from either side
without any change. The CEOs negotiated several other
terms of the agreement but not this one. When Sluss, on
behalf of Brightlamp, asked Worthen whether they were
“in agreement” on July 23, Worthen thereafter addressed
only the payment amount, indicating that the other terms
were not in dispute. All of this objectively supports the con-
clusion that the CEOs had a common understanding of the
scope of the covenant not to sue.
Most importantly, there is no indication in the record
that either side believed, or acted as if it believed, that the
term failed to extend to the Two Asserted Patents and the
Five Additional Patents, which together made up a single
patent family.3 The negotiations, then, provide additional
objective evidence that the parties had a meeting of the
minds to resolve their disputes as to the Two Asserted Pa-
tents and the Five Additional Patents. While we conclude
that the district court erred in its reading of “NeurOptics’
pupillometer patent portfolio,” we fully agree with its
larger conclusion that the parties reached a binding agree-
ment to settle this litigation.
3 Indeed, the parties do not dispute that the term co-
vers at least the Two Asserted Patents as well as the Five
Additional Patents.
Case: 22-1059 Document: 48 Page: 15 Filed: 02/17/2023

-- 15 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 16
B
Indiana law provides that settlement agreements are
enforceable if (1) the parties demonstrated an intent to be
bound and (2) all essential terms are sufficiently definite to
allow “‘a reasonable and logical interpretation.’” Sands v.
Helen HCI, LLC, 945 N.E.2d 176, 180-81 (Ind. Ct. App.
2011) (quoting Conwell, 906 N.E.2d at 813); see also Wolvos
v. Meyer, 668 N.E.2d 671, 675 (Ind. 1996). Here, the dis-
trict court did not abuse its discretion in concluding both
requirements were met.
1
The district court found that the “parties’ conduct . . .
exhibited an intent to be bound,” J.A. at 345, a factual find-
ing we review for clear error, see Jetz Serv. Co., Inc. v. Ven-
tures, 165 N.E.3d 990, 994-95 (Ind. Ct. App. 2021). We find
no such error. As the district court observed, after ex-
changing a series of proposals on the essential terms of a
settlement, the two CEOs reached agreement on July 24.
Then “Mr. Sluss directed Mr. Worthen to notify counsel of
the agreement, Mr. Worthen did so, and the parties noti-
fied the Court the same day that a settlement had been
reached.” J.A. at 345. The parties intended to be bound by
the essential terms they negotiated, including the release
and covenant not to sue provided by NeurOptics to Bright-
lamp on the Two Asserted Patents and the Five Additional
Patents.
NeurOptics contends that the parties merely reached
an agreement to agree rather than an enforceable agree-
ment. As support, NeurOptics observes that after reaching
the July 24 Agreement, both CEOs requested that their
lawyers formalize the agreement. According to NeurOp-
tics, this shows the CEOs did not believe the agreement
they had reached was itself binding. We disagree. Indiana
cases make clear that parties’ desire to formalize their
agreement does not demonstrate they lacked an intent to
be bound by what they had agreed to. See Sands, 945
Case: 22-1059 Document: 48 Page: 16 Filed: 02/17/2023

-- 16 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 17
N.E.2d at 181 (finding intent to be bound despite parties’
stated desire to later formalize their agreement); see also
MH Equity Managing Member, LLC v. Sands, 938 N.E.2d
750, 757 (Ind. Ct. App. 2020) (explaining that contracts
may obligate parties to “execute a subsequent final written
agreement,” which “is understood to be a mere memorial of
the agreement already reached”). “[A] well known rule pro-
vides that mere reference to a more formalized contract
does not void the presently existing agreement.” Wolvos,
668 N.E.2d at 675.
The CEOs’ correspondence demonstrates that they
sought a binding settlement agreement and that both be-
lieved they had obtained one by agreeing on its key terms.
There is no indication in their discussions that they be-
lieved their obligations were contingent upon the subse-
quent execution of a final document. On July 23, Sluss
asked Worthen whether they were “in agreement,” to
which Worthen responded the next day by raising only the
issue of the amount Brightlamp would pay NeurOptics, a
matter the CEOs reached agreement on later that day.
Sluss stated in an email to Worthen he was “happy we can
come to an arrangement,” to which there was no objection
from Worthen. J.A. 112. Indeed, in response, NeurOptics’
counsel suggested telling the court that the parties had
“reached agreement,” and the parties then did so. J.A. 289.
From this evidence, we conclude that the district court did
not abuse its discretion in concluding the parties intended
to be bound.
2
Under Indiana law, “[t]o be valid and enforceable, a
contract must be reasonably definite and certain.” Con-
well, 906 N.E. at 813. Thus, if an essential term is suffi-
ciently unclear to leave the intention of the parties
uncertain, the contract cannot be specifically enforced. See
id. “[A]bsolute certainty in all terms is not required.” Id.
“[A]n offer which appears to be indefinite may be given
Case: 22-1059 Document: 48 Page: 17 Filed: 02/17/2023

-- 17 of 18 --

NEUROPTICS, INC. v. BRIGHTLAMP, INC. 18
precision by . . . [the] course of dealing between the par-
ties.” Allen v. Clarian Health Partners, Inc., 980 N.E.2d
306, 309-10 (Ind. 2012) (internal quotation omitted). “A
court will not find that a contract is so uncertain as to pre-
clude specific enforcement where a reasonable and logical
interpretation will render the contract valid.” Conwell, 906
N.E.2d at 813.
As we have already explained, the term “NeurOptics’
pupillometer patent portfolio” is amenable to a reasonable
and logical interpretation: the Two Asserted Patents and
the Five Additional Patents. These are the patents at issue
in this infringement action, and these are the patents for
which the parties needed resolution before this case could
be dismissed. Because there was no genuine ambiguity in
the July 24 Agreement, the district court did not abuse its
discretion by enforcing the July 24 Agreement.
Accordingly, we affirm the district court’s decision to
enforce the settlement agreement and dismiss the parties’
claims and counterclaims.
IV
We have considered NeurOptics’ remaining arguments
and find them unpersuasive. Hence, while we vacate the
district court’s interpretation of “NeurOptics’ pupillometer
patent portfolio,” because the term is properly understood
in the July 24 Agreement as including only the Two As-
serted Patents and the Five Additional Patents, we still af-
firm the district court’s enforcement of the parties’
settlement agreement and dismissal of this patent litiga-
tion.
AFFIRMED
COSTS
No costs.
Case: 22-1059 Document: 48 Page: 18 Filed: 02/17/2023

-- 18 of 18 --