IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
AFFINION NET PATENTS, INC., )
)
Plaintiff, ) Civil Action No, 04—360—JIF
J
v. )
) PUBLIC REDACTED VERSION
MARETZ INC., )
)
Defendant. )
DECLARATION OF I. BENNETT CLARK IN SUPPORT OF MARITZS
OPPOSITION TO AEFINIOIWS MOTION TO STRIKE
E, J. Bennett Clark, declare as follows:
l. l am counsel of record for defendant Maritz Inc.
2. Maritz’s counterclaim allegations at issue eoncem basic facts well~§
Netcentives was involved in the 1999-2001 timeframe. The following pleadings, which have
been maintained in plaintiffs files and were provided by plaintiffto Maritz early in this case,
reflect the various lawsuits in which Netcentives was involved;
a. Complaint For Declaratory and injunctive Relief tiled in the United States
District Court for the Northern District of California by Mypointscom, Inc. against
Netcentives on or about March l9, 1999, alleging invalidity ofthe ‘870 patent.
b. Complaint for Declaratory Judgment filed in the United States District
Court for the District of Massachusetts by The Sperry and Hutchinson Company, inc.
against Netcentives on or about February 17, 2000, seeking a cleclaration that the ‘870
and ‘4l2 patents were invalid.
c. Complaint filed in the United States District Court for the Northern
District ot`California by Netcentives against S&1~l and Webmiles.coni Corp. on or about
February 28, 2000, alleging infringement ofthe ‘870 and ‘4l 2 patents.
d. Complaint tiled in the United States District Court for the Northern
District ofCalifornia by Netcentives against Niassnidiuntcont, Inc., TelAmerica Media
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inc., Srnan Net Corp., and Pointsurfcom, Inc. on or about March 2t, 2000 alleging
infringement ofthe ‘870 and ‘·4l2 patents.
e. Compiaint tiled in the United States District Coun for the Northern
District ofCalifornia by Netcentives against Beenacoin, Inc., Carlson Companies inc.,
Passpoints, inc., Freeridecom, LLC, and Stario, inc. on or about July 21, 2000, aileging
infringement ofthe ‘8'?0 and ‘4l2 patents.
f. Complaint tiied in the United States District Court for the District of
Minnesota by Radisson Hotels International, Inc., ez al. against Netcentives on or about
luiy 28, 2000, alleging invalidity, uneniorceability, and incorrect inventorship ofthe `870
and ‘4l2 patents.
g. Complaint for Deciaratory Judgment filed in the United States District
Court for the i\loithern District of California by S&I—l against Netcentives on or about
February 23, 200l, ai-leging the *870 patent was invaiid and unenforceable based upon
Netcentivrfs and Mr. Storey’s failure to disctose the ‘4·¤l4 patent and/or its commercial
embodiments to the US. Patent Office during the prosecution ofthe ‘870 patent.
Materials generated in those lawsuits, including depositions, exhibits, documents and
court filings, appear to have been maintained in plaintiffs (or its predecessors) tiles -· or those
oftheir counsei -— and were produced to Maritz in this case. This information is the source of
many ofthe facts underlying Maritz`s counterclaim allegations.
3. The allegations surrounding prosecution ofthe '870 (parent) patent were hotly
contested inthe Netcentives lawsuits. Questions and allegations relating to inventorship, patent
ownership, incquitable conduct and invalidity were very much at issue.
4. I have reviewed the prosecution history for U.S. Patent No. 5,774,870. At no time
did Mr. Storey and/or his original patent attorney disclose tothe USPTO the facts that (a) well
beiore the tiling ofthe ‘870 patent application, Storey and a group ofRadisson ernployees had
developed a program similar to that later claimed by Storey as his aione in the '870 patent and
the later Storey patents; and tb) the earlier program matter (known as "Look to Boot?) was the
subject ofa patent appiication pending at the time the ‘870 patent application was tiled.
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@h§i$i@"i§ ~
6. The Netcentives litigation also invoived scrutiny ofthe prosecution ofthe '¢1%2
patent in suit. § have reviewed the prosecution history for U.S. Patent No. 6,009,412. After
Netcentives obtained the rights from Thomas Storey, it tiled a "petition to make special." in it,
Netcentives made a superficial disclosure ofthe Look to Book patent and failed to point out the
earlier non—disciosures. This activity was examined in the Netcentives litigation, including for
example tlirough the depositions ofprosecuting attorneys Eohn Stattler and Phillip Albert. The
prosecutor ofthe '870 patent, Joseph Bach, was also deposed. Mr. Storey and several of the
Look to Book co—inventors were also deposed during the Netcentives litigation.
7. ln the instant case, I personally deposed Messrs. Storey, Bach and Stattter. The
events surrounding prosecution ofthe ‘S70 and '4112 patents were explored at length, with courisei
For ANP present and participating in each deposition. Exhibits used in the questioning were
matters from the prosecution history, as well as exhibits produced to Maritz by plaiiitiff, from the
litigation and prosecution tiles it controls. ANP‘s counsei represented Stattler and Storey and
was very conversant with the evidence ofirieqtsitahle conduct, Mr. Storey testified that he has a
"compensation arran_gernent" with Afiinion (and Trilegiant before that) under which he has been
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paid around $20,000. I-le also indicated that he expects to receive farther compensation under
this arrangement for his involvement in this case.
8. The fourth Storey application (Serial No. t0f420,90l) was prosecuted from April,
2003 to March, 2006, and was handled by â€l`rilegiant's (now ANP‘s) counsel Rothwell Figg. the
Rothwell Figg tirm also handled assertion ofthe Storey patents against other entities prior to
Manta and is the lead limi in tl cttrrent litigation. Daring the prosecution ofthis application,
the substantial material itiiortrtation that came to iight during the Netcentives litigation was not
disclosed to the Patent Oftice. Maritz filed its amended answer and counterclairn alleging
inetrnitable conduct, etal. in September, 2005. About tive months later, after pursuing the ‘901
application all the way to the Board of Patent Appeals and successfully reversing the examiner’s
final rejection, ANP abandoned the application without having disclosed information from the
Netcentives litigation.
9. ANP took depositions alter May 12, 2006. The last otthese occurred on luty 28,
2006.
10. Daring discussions related to ANP’s ihendmminent filing ofits motion for leave
to amend the complaint (which was tiled March 8, 2006), I mentioned to counsel for ANP the
possibility ofallcging a iaches defense in response to the amended complaint.
l declare under penalty otperiury of the laws ofthe United States that the foregoing is
true and correct.
EXECUTED September t3, 2006.
Z Q. Qs;
3. Bennett Clark
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