`
`DISMISSAL AGREEMENT
`
`This Dismissal Agreement (“Agreement”) is made and entered into as of the date of the
`last signature set forth on the signature page below (the “Effective Date”), between and among
`Rosen Technologies LLC, having a place of business at 17330 Preston Road, Suite 200D, Dallas,
`Texas 75252 (“Rosen”) and Lennox Industries Inc., having a place of business at 2100 Lake Park
`Blvd., Richardson, TX 75080 (“Lennox”). Rosen and Lennox are hereinafter sometimes
`individually referred to as a “Party” and hereinafter sometimes collectively referred to as the
`“Parties.”
`
`RECITALS
`WHEREAS Rosen filed a lawsuit against Lennox in the United States District Court for
`the Northern District of Texas, styled Rosen Technologies LLC v. Lennox Industries Inc., Civil Action
`No. 3:22-cv-732 (the “Lawsuit”).
`
`WHEREAS Rosen asserted in the Lawsuit claims against Lennox for infringement of U.S.
`Patent Nos. 7,232,075 (the “‘075 Patent”), 7,156,318 (the “‘318 Patent”), 6,619,555 (the “‘555
`Patent”); 6,789,739 (the “‘739 Patent”), and 7,185,825 (the “‘825 Patent”) (all five collectively,
`the “Asserted Patents”) and Lennox denies these claims.
`
`WHEREAS Rosen owns by assignment the Asserted Patents;
`
`WHEREAS Lennox has filed Petitions for Inter Partes Review of the Asserted Patents (the
`“IPRs”), each of which have been instituted by the United States Patent Trial and Appeal Board
`as IPRs numbered IPR2023-00715, -00716, -00717, -00718, and -00719;
`
`WHEREAS the District Court in the Lawsuit issued a Claim Construction Order on
`September 11, 2023, finding the asserted claims of the ‘318 and ‘075 Patents invalid;
`
`WHEREAS the District Court entered a Stipulated Consent Judgment as to ‘318 and ‘075
`Patents on January 17, 2024;
`
`WHEREAS the Parties now desire to dispose of the dispute between them in the Lawsuit
`and the IPRs.
`
`AGREEMENT
`
`The Parties agree as follows:
`
`Definitions.
`
`1.
`
`
`Affiliates. For purposes of this Agreement, with respect to a person or entity, the
`1.1
`term “Affiliate” shall mean any other person or entity (including any corporation,
`company, joint venture, partnership, firm, limited liability company, or subsidiary)
`formerly, now or hereafter Controlled by, Controlling, or under common Control with such
`person or entity. For avoidance of doubt, two entities which are Controlled by the same
`
`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 1
`
`

`

`
`
`
`corporation, natural person, or group of corporations or natural persons shall be deemed
`Affiliates. In the event that a person or entity is not an Affiliate as of the Effective Date of
`this Agreement, but later becomes an Affiliate through an acquisition by Lennox or any of
`its Affiliates (an “Acquired Affiliate”), such Acquired Affiliate shall be deemed, upon
`completion of such transaction or transactions, to be an Affiliate for the purposes of this
`Agreement as of the Effective Date of this Agreement.
`
`Control. The term “Control” shall mean the direct or indirect: (a) ownership or
`1.2
`control (whether through contract or otherwise) of: (1) in the case of corporate entities,
`more than fifty percent (50%) of the stock or shares entitled to vote for the election of
`directors, or (2) in the case of non-corporate entities, more than fifty percent (50%) of the
`equity interest in such non-corporate entity; or (b) power (whether through contract or
`otherwise) to direct management or management policies of such entity. Notwithstanding
`the foregoing, in any country where a person or entity is not permitted by law to own more
`than fifty percent (50%) of the shares of an entity in that country, “Control” shall mean the
`direct or indirect: (x) ownership or control of the maximum allowed ownership interest in
`such entity under the laws of that country; or (y) power (whether through contract or
`otherwise) to direct management or management policies of such entity.
`
`
`Covenant Not to Sue. Rosen hereby covenants and agrees, on behalf of itself and its
`2.
`Affiliates, its predecessors, successors, and assigns to the fullest extent permitted by law, that
`neither Rosen nor any of its Affiliates, nor its predecessors, successors, or assigns, will directly or
`indirectly institute, file or cause to be filed, maintain, assist with, or advise to be commenced, or
`threaten, any action or suit for patent infringement with respect to any of the Asserted Patents at
`any time, against Lennox or any of its Affiliates, contractors, suppliers, or customers concerning
`any product or service made, used, sold, offered for sale, imported and/or exported by Lennox or
`any of its Affiliates. The foregoing covenant not to sue extends to direct and indirect suppliers
`and customers of Lennox. In the event Lennox or any of its Affiliates is involved in a business
`combination involving the transfer or sale of all or a portion of the business of Lennox or any of
`its Affiliates, including the transfer or sale of all or part of a product line, and regardless of the
`manner in which any such transaction is accomplished, the foregoing covenant not to sue shall
`extend to that portion of the business combination that was related to Lennox or any of its Affiliates
`and shall continue to cover all parties to whom the covenant was originally issued in this
`Agreement.
`
`Release. Rosen irrevocably releases, acquits, and forever discharges Lennox, and its
`3.
`Affiliates, as well as its officers, directors, shareholders, members, employees, agents, consultants,
`vendors (whether direct or indirect), manufacturers, suppliers (whether direct or indirect),
`customers (whether direct or indirect), end users, experts, representatives, and attorneys from any
`and all claims or liabilities of any kind and nature at law, in equity, or otherwise, whether such
`claims or liabilities are known or unknown, suspected or unsuspected, disclosed or undisclosed, in
`each case (i) arising out of or relating in any way to the Asserted Patents including without
`limitation any claims for infringement of those patents, and (ii) either concerning actions taken by
`
`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 2
`
`

`

`Lennox or its Affiliates or concerning any product or service made, used, sold, offered for sale,
`imported and/or exported by Lennox or any of its Affiliates.
`Rosen voluntarily and, with full knowledge of its significance, expressly waives and relinquishes
`any and all rights it may have under any state or federal statute, rule, or common law principle, in
`law or equity, concerning specific limitations on releases. Specifically, Rosen hereby expressly
`waives any rights it may have under California Civil Code Section 1542 (or any other similar law
`in any jurisdiction), which provides that: “A general release does not extend to claims which the
`creditor does not know or suspect to exist in his or her favor at the time of executing the release,
`which if known by him or her must have materially affected his or her settlement with the debtor.”
`4.
`Representations and Warranties
`a. Rosen represents and warrants that it owns all right, title, and interest to the Asserted
`Patents and that no other person or entity has a claim against Lennox for alleged
`infringement of any of the Asserted Patents, whether past, present, or future.
`
`b. Rosen represents and warrants that it has not granted any exclusive license or any other
`rights in any of the Asserted Patents that would give a party other than Rosen standing
`to sue for infringement of any of the Asserted Patents. Rosen represents and warrants
`that it has not assigned or given any rights to a third party in any claim or cause of
`action, or rights to damages or other remedies, for alleged infringement of any of the
`Asserted Patents.
`
`
`Dismissal of Lawsuit. Within five (5) business days of the Effective Date, Rosen will use
`5.
`its best efforts to seek permission from the District Court to file a Stipulation of Dismissal in the
`form attached hereto as Exhibit A, dismissing Rosen’s claims against Lennox with prejudice.
`Within five (5) business days of receiving permission, Rosen shall file the Stipulation of Dismissal
`in the form attached hereto as Exhibit A. Both parties agree not to file any appeals with respect to
`the Lawsuit.
`
`The Lawsuit is currently administratively closed pending the results of IPR proceedings on the
`Asserted Patents. Lennox will cooperate with Rosen’s good faith efforts to cause the Court to
`reopen the case for the sole purpose of filing the stipulation of dismissal. If the dismissal cannot
`be filed due to the administrative closure, then the parties shall file the stipulation of dismissal
`immediately once permitted by the District Court. Rosen will use its best efforts to obtain
`
`
`c. Each Party represents and warrants that it (a) is a legal entity, validly existing and in
`good standing under the laws of the jurisdiction in which it was formed, and (b) has all
`necessary corporate power and authority to execute and deliver this Agreement, to bind
`its Affiliates, and to perform its obligations under this Agreement.
`
`
`d. Each Party represents and warrants that when executed, this Agreement shall constitute
`a legal, valid, and binding obligation of such Party and their Affiliates, enforceable
`against it and them in accordance with its terms. The Persons executing this Agreement
`on behalf of such Party have the power and authority to enter into this Agreement and
`to bind such Party to each and every obligation hereof.
`
`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 3
`
`

`

`7.
`
`permission to file the Stipulation of Dismissal as soon as possible and in a manner that the
`stipulation will be effective upon filing.
`
`Dismissal of IPRs. Within five (5) business days of the filing of the stipulation described
`6.
`in Paragraph 5 in such a manner that results in dismissal pursuant to the terms of the Stipulation
`of Dismissal, Lennox will seek authorization from the Patent Trial and Appeal Board to file Joint
`Motions to Terminate the IPRs, and, upon receiving permission, will subsequently file Joint
`Motions to Terminate the IPRs substantially in the form attached hereto as Exhibit B. In the event
`that any of the IPRs are not terminated, Lennox will not further participate in the proceedings
`except as required by law. Both parties agree not to file any appeals with respect to the IPRs.
`
`Attorneys’ fees and costs. Each party shall bear their own attorneys’ fees and costs.
`
`No Admissions. Nothing in this Agreement shall be interpreted as an admission by any
`8.
`Party of the validity or invalidity of any of the Asserted Patents, or as an admission by any Party
`regarding the infringement or noninfringement of any of those patents, or as an admission by any
`Party of any issue relating to the District Court Action or the IPR Proceedings concerning any of
`the Asserted Patents.
`9.
`Covenant Runs with the Patent(s). Rosen expressly agrees that the covenant not to sue in
`this Agreement runs with each of the Asserted Patents such that each party who subsequently owns
`or exclusively licenses any of the Asserted Patents shall be bound by the obligations of Rosen
`hereunder as if it were a party to this Agreement. Rosen agrees to notify any subsequent assignee
`or transferee of any of the Asserted Patents in writing of this Agreement and obtain their consent
`to be bound by its terms. Rosen shall record a copy of this settlement Agreement in the assignment
`records of the United States Patent and Trademark office for each of the Asserted Patents. The
`parties further agree that the covenant not to sue in this Agreement shall be treated as a license
`solely in the event of a Bankruptcy of Rosen or any future owner of any of the Asserted Patents,
`including without limitation for purposes of application of Section 365(n) of the bankruptcy code.
`
`10. Miscellaneous.
`a. Counterparts. This Agreement may be executed in counterparts, and such counterparts
`may be exchanged via electronic transmission. Each such counterpart shall be deemed
`an original, and all of which taken together shall be deemed a single document.
`
`b. Severability. If any term or other provision of this Agreement is held to be invalid,
`illegal, or incapable of being enforced in accordance with the terms hereunder, all other
`conditions and provisions of this Agreement shall nevertheless remain in full force and
`effect so long as the economic or legal substance of this Agreement is not affected in
`any manner materially adverse to any Party. Upon such determination that any term or
`other provision is invalid, illegal, or incapable of being enforced, the Parties shall
`negotiate in good faith to modify this Agreement so as to effectuate the original intent
`of the Parties as closely as possible in order that the transactions, rights, and obligations
`
`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 4
`
`

`

`contemplated by this Agreement be effectuated as originally contemplated to the
`greatest extent possible.
`
`
`c. Complete Agreement. This Agreement embodies the complete agreement and
`understanding between the Parties related to the subject matter hereof, and supersedes,
`merges, and cancels all previous representations, warranties or other statements,
`written or oral, with respect to the subject matter hereof.
`
`
`d. Amendment. No provision of this Agreement may be amended, supplemented, or
`modified except by a written instrument making specific reference hereto signed by all
`the Parties to this Agreement.
`
`
`e. Governing Law. This Agreement shall in all respects be governed by, and construed
`in accordance with the laws of the State of Texas without regard for any choice of law
`or other rules or laws that would cause the laws of any other jurisdiction to apply.
`
`
`f. Rules of Construction. Interpretation of this Agreement shall be governed by the
`following rules of construction: (a) references to “written” or “in writing” include in
`electronic form; (b) the headings contained in this Agreement are for reference
`purposes only; (c) the Parties have each participated in the negotiation and drafting of
`this Agreement and if an ambiguity or question of interpretation should arise, this
`Agreement shall be construed as if drafted jointly by the Parties and no presumption or
`burden of proof shall arise favoring or burdening any Party by virtue of the authorship
`of any of the provisions in this Agreement; and (d) a reference to any Person includes
`such Person’s successors and permitted assigns.
`
`
`
`[Signatures on Next Page]
`
`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 5
`
`

`

`IN WITNESS WHEREOF, the Parties have executed this Agreement on the dates set forth
`below.
`
`
`Rosen Technologies LLC
`
`By: _______________________________
`
`Print Name: ________________________
`
`Title: ________________________________________
`
`Date: ________________________________________
`
`
`
`
`
`
`
`
`
`
`
`Lennox Industries Inc.
`
`By:________________________________
`
`Print Name: _________________________
`Title: ________________________________________
`Date: ________________________________________
`
`Adam Baumli
`
`February 23, 2024
`
`Member
`
`Lanessa Bannister
`
`02/26/2024
`
`VP/GM, Lennox Residential
`
`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 6
`
`

`

`EXHIBIT A
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
`
`Civil Action No. 3:22-cv-00732-K
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`
`
`ROSEN TECHNOLOGIES LLC,
`
`
`
`
`
`LENNOX INDUSTRIES INC.,
`
`
`
`
`Plaintiff,
`
`
`
`v.
`
`
`
`Defendant.
`
`STIPULATION OF DISMISSAL
`
`Plaintiff Rosen Technologies LLC (“Rosen”) and Defendant Lennox Industries Inc.
`
`(“Lennox”) file this Stipulation of Dismissal under Fed. R. Civ. P. 41(a)(1)(A)(ii). Rosen and
`
`Lennox stipulate that:
`
`1.
`
`Rosen consents to dismissal with prejudice of all of its claims against Lennox in
`
`this suit.
`
`2.
`
`Lennox consents to dismissal without prejudice of all of its counter-claims against
`
`Rosen in this suit.
`
`3.
`
`Rosen and Lennox shall each bear their own attorney fees and costs incurred in
`
`connection with this action.
`
`
`
`
`
`Dated: February __, 2024
`
`
`
`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 7
`
`

`

`
`
`
`
`Respectfully submitted,
`
`
`/s/David Wille
`David Wille
`Texas Bar No. 785250
`Samir Bhavsar
`Texas Bar No. 798065
`Morgan Mayne
`Texas Bar No. 24084387
`Caroline Duncan
`Texas Bar No. 24108811
`BAKER BOTTS L.L.P.
`2001 Ross Avenue, Suite 900
`Dallas, Texas 75201
`Telephone: (214) 953-6595
`Facsimile: (214) 953-4595
`david.wille@bakerbotts.com
`samir.bhavsar@bakerbotts.com
`morgan.mayne@bakerbotts.com
`caroline.duncan@bakerbotts.com
`
`Attorneys for Defendant Lennox Industries
`Inc.
`
`/s/Neal Massand
`Hao Ni
`Texas Bar No. 24047205
`Timothy T. Wang
`Texas Bar No. 24067927
`Neal Massand
`Texas Bar No. 24039038
`Stevenson Moore V
`Texas Bar No. 24076572
`NI, WANG & MASSAND, PLLC
`8140 Walnut Hill Ln., Ste. 500
`Dallas, TX 75231
`Tel: (972) 331-4600
`Facsimile: (972) 314-0900
`hni@nilawfirm.com
`twang@nilawfirm.com
`nmassand@nilawfirm.com
`smoore@nilawfirm.com
`
`Attorneys for Plaintiff Rosen Technologies
`LLC
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on February ___, 2024, the foregoing was filed electronically in
`
`compliance with Local Rule CV-5(b)(1) and served via the Court’s electronic filing system on all
`
`counsel who have consented to electronic service.
`
`
`
`
`
`/s/ Hao Ni
`Hao Ni
`
`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 8
`
`

`

`EXHIBIT B
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`LENNOX INDUSTRIES INC.,
`Petitioner,
`vs.
`ROSEN TECHNOLOGIES LLC,
`Patent Owner
`____________
`Case No. IPR2023-00715
` U.S. Patent No. 6,619,555
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW OF U.S.
`PATENT NO. 6,619,555 UNDER 35 U.S.C. § 317 AND 37 C.F.R. § 42.72
`
`
`
`
`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 9
`
`

`

`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.72, and 37 C.F.R. § 42.74, Petitioner Lennox
`
`Industries Inc. (“Lennox”) and Patent Owner Rosen Technologies LLC (“Rosen”) (collectively,
`
`the “Parties”) jointly move to terminate the above-captioned inter partes review proceeding
`
`pursuant to the Parties’ settlement of their dispute related to the challenged patent, U.S. Patent No.
`
`6,619,555 (the “’555 Patent”). This joint motion was authorized by the Board in its email dated
`
`DATE. Along with this joint motion to terminate this proceeding, the Parties concurrently submit
`
`a true copy of the Parties’ Dismissal Agreement as Exhibit XX. There are no other agreements,
`
`written or oral, between the Parties made in connection with, or in contemplation of, the
`
`termination of this proceeding.
`
`
`
`
`
`I.
`
`ARGUMENT
`
`A joint motion to terminate generally must “(1) include a brief explanation as to why
`
`termination is appropriate; (2) identify all parties in any related litigation involving the patents at
`
`issue; (3) identify any related proceedings currently before the Office; and (4) discuss specifically
`
`the current status of each such related litigation or proceeding with respect to each party to the
`
`litigation or proceeding.” Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2
`
`(P.T.A.B. July 28, 2014).
`
`
`
`
`
`a.
`
`Brief Explanation as to Why Termination Is Appropriate
`
`Termination of this inter partes review is appropriate because the Parties have resolved
`
`their dispute as to the ’555 Patent and have reached an agreement to, among other things, terminate
`
`this inter partes review. EXXX (Dismissal Agreement). The Parties are concurrently filing a true
`
`copy of the Parties’ written Dismissal Agreement for the district court litigation, as well as this
`
`proceeding, as Exhibit XX.
`
`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 10
`
`

`

`Pursuant to 37 C.F.R. § 42.74(b), the Parties acknowledge that, as of the filing of this
`
`Motion, Exhibit XX represents the entire agreement or understanding between the Parties made in
`
`connection with, or in contemplation of, the termination of this proceeding, and further, that
`
`Exhibit XX is a true and accurate copy of the agreement between the Parties that resolves the
`
`present proceeding. The Parties certify that there are no other written or oral agreements or
`
`understandings, including any collateral agreements, between them, including but not limited to
`
`licenses, covenants not to sue, confidentiality agreements, payment agreements, or other
`
`agreements of any kind that have been made in connection with or in contemplation of the
`
`termination of the instant proceeding.
`
`The Parties agree that neither Patent Owner nor Petitioner will be prejudiced by termination
`
`of this proceeding. The Parties “may terminate the proceeding . . . , unless the Board has already
`
`decided the merits of the proceeding.” Patent Trial and Appeal Board Consolidated Trial Practice
`
`Guide at 4 (Nov. 2019). Patent Owner has yet to file its Patent Owner Response, and the Board
`
`has yet to decide the merits of this proceeding. The Parties have now settled their dispute and have
`
`reached agreement to terminate this proceeding. See Oracle Corp. v. Cmty. United IP, LLC,
`
`CBM2013-00015, Paper 13 at 2 (P.T.A.B. July 25, 2013) (“Generally, the Board expects that a
`
`proceeding will terminate after the filing of a settlement agreement.”)
`
`Public policy favors terminating this proceeding. Congress and federal courts have
`
`expressed a strong interest in encouraging settlement in litigation. See Delta Air Lines, Inc. v.
`
`August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the
`
`settlement of litigation.”); Bergh v. Dep’t of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The
`
`law favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The Federal Circuit places a
`
`particularly strong emphasis on settlement. See Cheyenne River Sioux Tribe v. United States, 806
`
`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 11
`
`

`

`F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to mitigate antagonism and
`
`hostility between parties). And the Board’s Trial Practice Guide stresses that “[t]here are strong
`
`public policy reasons to favor settlement between the parties to a proceeding.” Patent Trial and
`
`Appeal Board Consolidated Trial Practice Guide, at 86 (Nov. 2019).
`
`
`
`b.
`
`Identification of Parties and Status of Litigation
`
`The underlying district court litigation between the Parties, captioned Rosen Technologies
`
`LLC v. Lennox Industries Inc., Case No. 3:22-CV-00732-K (N.D. Tex.), was stayed and has now
`
`been dismissed by stipulation. Pursuant to the Parties’ Dismissal Agreement (EXXX), Rosen has
`
`filed a Stipulation of Dismissal in the form attached as Exhibit A to EXXX, stipulating to dismissal
`
`with prejudice of Rosen’s claims against Lennox involving the ’555 Patent. Lennox is the only
`
`Petitioner in this proceeding, meaning that this proceeding can be terminated in its entirety
`
`pursuant to this motion.
`
`Further, the ’555 Patent is not involved in any other pending litigation and no future
`
`litigation or proceeding involving the ’555 Patent is currently contemplated.
`
`
`
`c.
`
`Identification and Status of Proceedings Before the USPTO
`
`Rosen’s Patent Owner Response in this proceeding is due on February 6, 2024. See Paper
`
`No. 11 at 11. The Parties have now resolved their dispute and reached agreement to terminate this
`
`proceeding as well as inter partes review proceedings IPR2023-00716 (concerning related U.S.
`
`Patent No. 6,789,739), IPR2023-00717 (concerning U.S. Patent No. 7,156,318), IPR2023-00718
`
`(concerning U.S. Patent No. 7,185,825), and IPR2023-00719 (concerning U.S. Patent No.
`
`7,232,075). The Parties are also jointly moving to terminate IPR2023-00716, -00717, -00718, and
`
`-00719. The USPTO can conserve its resources by terminating now, removing the need for the
`
`Board to further consider the arguments and to render a Final Written Decision.
`
`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 12
`
`

`

`Therefore, for the foregoing reasons, the parties jointly and respectfully request termination
`
`of the present proceeding, IPR2023-00715, without prejudice to either party.
`
`Respectfully submitted,
`
`Date:
`
`
`
`Date:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`By:
`
`(Signature blocks, certificate of service, etc., to be added at the time of filing).
`
`
`
`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 13
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`LENNOX INDUSTRIES INC.,
`Petitioner,
`vs.
`ROSEN TECHNOLOGIES LLC,
`Patent Owner
`____________
`Case No. IPR2023-00716
`U.S. Patent No. 6,789,739
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW OF U.S.
`PATENT NO. 6,789,739 UNDER 35 U.S.C. § 317 AND 37 C.F.R. § 42.72
`
`
`
`
`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 14
`
`

`

`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.72, and 37 C.F.R. § 42.74, Petitioner Lennox
`
`Industries Inc. (“Lennox”) and Patent Owner Rosen Technologies LLC (“Rosen”) (collectively,
`
`the “Parties”) jointly move to terminate the above-captioned inter partes review proceeding
`
`pursuant to the Parties’ settlement of their dispute related to the challenged patent, U.S. Patent No.
`
`6,789,739 (the “’739 Patent”). This joint motion was authorized by the Board in its email dated
`
`DATE. Along with this joint motion to terminate this proceeding, the Parties concurrently submit
`
`a true copy of the Parties’ Dismissal Agreement as Exhibit XX. There are no other agreements,
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`written or oral, between the Parties made in connection with, or in contemplation of, the
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`termination of this proceeding.
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`I.
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`ARGUMENT
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`A joint motion to terminate generally must “(1) include a brief explanation as to why
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`termination is appropriate; (2) identify all parties in any related litigation involving the patents at
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`issue; (3) identify any related proceedings currently before the Office; and (4) discuss specifically
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`the current status of each such related litigation or proceeding with respect to each party to the
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`litigation or proceeding.” Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2
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`(P.T.A.B. July 28, 2014).
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`a.
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`Brief Explanation as to Why Termination Is Appropriate
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`Termination of this inter partes review is appropriate because the Parties have resolved
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`their dispute as to the ’739 Patent and have reached an agreement to, among other things, terminate
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`this inter partes review. EXXX (Dismissal Agreement). The Parties are concurrently filing a true
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`copy of the Parties’ written Dismissal Agreement for the district court litigation, as well as this
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`proceeding, as Exhibit XX.
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`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 15
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`Pursuant to 37 C.F.R. § 42.74(b), the Parties acknowledge that, as of the filing of this
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`Motion, Exhibit XX represents the entire agreement or understanding between the Parties made in
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`connection with, or in contemplation of, the termination of this proceeding, and further, that
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`Exhibit XX is a true and accurate copy of the agreement between the Parties that resolves the
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`present proceeding. The Parties certify that there are no other written or oral agreements or
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`understandings, including any collateral agreements, between them, including but not limited to
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`licenses, covenants not to sue, confidentiality agreements, payment agreements, or other
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`agreements of any kind that have been made in connection with or in contemplation of the
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`termination of the instant proceeding.
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`The Parties agree that neither Patent Owner nor Petitioner will be prejudiced by termination
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`of this proceeding. The Parties “may terminate the proceeding . . . , unless the Board has already
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`decided the merits of the proceeding.” Patent Trial and Appeal Board Consolidated Trial Practice
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`Guide at 4 (Nov. 2019). Patent Owner has yet to file its Patent Owner Response, and the Board
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`has yet to decide the merits of this proceeding. The Parties have now settled their dispute and have
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`reached agreement to terminate this proceeding. See Oracle Corp. v. Cmty. United IP, LLC,
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`CBM2013-00015, Paper 13 at 2 (P.T.A.B. July 25, 2013) (“Generally, the Board expects that a
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`proceeding will terminate after the filing of a settlement agreement.”)
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`Public policy favors terminating this proceeding. Congress and federal courts have
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`expressed a strong interest in encouraging settlement in litigation. See Delta Air Lines, Inc. v.
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`August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the
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`settlement of litigation.”); Bergh v. Dep’t of Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The
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`law favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The Federal Circuit places a
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`particularly strong emphasis on settlement. See Cheyenne River Sioux Tribe v. United States, 806
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`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 16
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`F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to mitigate antagonism and
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`hostility between parties). And the Board’s Trial Practice Guide stresses that “[t]here are strong
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`public policy reasons to favor settlement between the parties to a proceeding.” Patent Trial and
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`Appeal Board Consolidated Trial Practice Guide, at 86 (Nov. 2019).
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`b.
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`Identification of Parties and Status of Litigation
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`The underlying district court litigation between the Parties, captioned Rosen Technologies
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`LLC v. Lennox Industries Inc., Case No. 3:22-CV-00732-K (N.D. Tex.), was stayed and has now
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`been dismissed by stipulation. Pursuant to the Parties’ Dismissal Agreement (EXXX), Rosen has
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`filed a Stipulation of Dismissal in the form attached as Exhibit A to EXXX, stipulating to dismissal
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`with prejudice of Rosen’s claims against Lennox involving the ’739 Patent. Lennox is the only
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`Petitioner in this proceeding, meaning that this proceeding can be terminated in its entirety
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`pursuant to this motion.
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`Further, the ’739 Patent is not involved in any other pending litigation and no future
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`litigation or proceeding involving the ’739 Patent is currently contemplated.
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`c.
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`Identification and Status of Proceedings Before the USPTO
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`Rosen’s Patent Owner Response in this proceeding is due on February 6, 2024. See Paper
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`No. 11 at 11. The Parties have now resolved their dispute and reached agreement to terminate this
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`proceeding as well as inter partes review proceedings IPR2023-00715 (concerning related U.S.
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`Patent No. 6,619,555), IPR2023-00717 (concerning U.S. Patent No. 7,156,318), IPR2023-00718
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`(concerning U.S. Patent No. 7,185,825), and IPR2023-00719 (concerning U.S. Patent No.
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`7,232,075). The Parties are also jointly moving to terminate IPR2023-00715, -00717, -00718, and
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`-00719. The USPTO can conserve its resources by terminating now, removing the need for the
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`Board to further consider the arguments and to render a Final Written Decision.
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`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 17
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`Therefore, for the foregoing reasons, the parties jointly and respectfully request termination
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`of the present proceeding, IPR2023-00716, without prejudice to either party.
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`Respectfully submitted,
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`Date:
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`Date:
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`By: --DRAFT-¬
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`By: --DRAFT-¬
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`(Signature blocks, certificate of service, etc., to be added at the time of filing).
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`LENNOX EXHIBIT 1057
`Lennox Industries Inc. v. Rosen Technologies LLC, IPR2023-00715, Page 18
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`LENNOX INDUSTRIES INC.,
`Petitioner,
`vs.
`ROSEN TECHNOLOGIES LLC,
`Patent Owner
`____________
`Case No. IPR2023-00717
`U.S. Pa