Free Verdict Sheet - District Court of Delaware - Delaware

Case 1:04-cv-00360-JJF

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE _______________________________________ ) ) ) Plaintiff, ) ) v. ) ) MARITZ INC., ) ) Defendant. ) _______________________________________) AFFINION NET PATENTS, INC.,

C.A. No. 04-360-JJF

AFFINION'S PROPOSED SPECIAL VERDICT FORM Pursuant to D.Del. LR 51.1(c) plaintiff Affinion Net Patents, Inc. submits its proposed verdict sheet. Affinion has not included jury interrogatories on derivation and written description because Maritz has not properly pleaded those defenses. Affinion has also not included jury interrogatories on definiteness or Maritz's multiple equitable defenses, as those are not issues for the jury to decide. To the extent that the Court determines that the jury should render a verdict on any of these defenses, Affinion will submit a revised proposed verdict form. MORRIS, NICHOLS, ARSHT & TUNNELL LLP

/s/ Maryellen Noreika
_________________________________________ Jack B. Blumenfeld (#1014) Maryellen Noreika (#3208) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899 (302) 658-9200 Attorneys for Plaintiff Affinion Net Patents, Inc.

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Of Counsel: Steven Lieberman Sharon L. Davis R. Elizabeth Brenner ROTHWELL, FIGG, ERNST & MANBECK, P.C. 1425 K Street, N.W. Suite 800 Washington, D.C. 20005 (202) 783-6040 September 11, 2006
536611

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SECTION I: INFRINGEMENT Question 1: Has plaintiff proven by a preponderance of the evidence that the VAULT system literally infringes any of the following claims of the '412 Patent? Claim 10: Claim 11: Claim 12: Claim 13: Claim 14: Claim 15: Claim 16: Claim 17: Claim 27: Claim 28: Claim 29: Claim 30: Claim 31: Claim 32: Claim 33: Claim 34: Claim 36: Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) No No No No No No No No No No No No No No No No No ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant)

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Question 2: Has plaintiff proven by a preponderance of the evidence that the VAULT system infringes any of the following claims of the '412 Patent under the doctrine of equivalents?1 Claim 10: Claim 11: Claim 12: Claim 13: Claim 14: Claim 15: Claim 16: Claim 17: Claim 27: Claim 28: Claim 29: Claim 30: Claim 31: Claim 32: Claim 33: Claim 34: Claim 36: Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) No No No No No No No No No No No No No No No No No ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant)

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The Court has not yet construed the disputed claim terms. Depending on the construction of those terms, Affinion may decide not to assert infringement under the doctrine of equivalents for one or more of the asserted claims.

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Question 3: Has plaintiff proven by a preponderance of the evidence that the AwardHQ system literally infringes any of the following claims of the '412 Patent? Claim 10: Claim 11: Claim 12: Claim 13: Claim 14: Claim 15: Claim 16: Claim 17: Claim 27: Claim 28: Claim 29: Claim 30: Claim 31: Claim 32: Claim 33: Claim 34: Claim 36: Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) No No No No No No No No No No No No No No No No No ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant)

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Question 4: Has plaintiff proven by a preponderance of the evidence that the AwardHQ system infringes any of the following claims of the '412 Patent under the doctrine of equivalents?2 Claim 10: Claim 11: Claim 12: Claim 13: Claim 14: Claim 15: Claim 16: Claim 17: Claim 27: Claim 28: Claim 29: Claim 30: Claim 31: Claim 32: Claim 33: Claim 34: Claim 36: Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) No No No No No No No No No No No No No No No No No ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant)

Question 5: If you answered yes to any of the questions above, has plaintiff proven by clear and convincing evidence that defendant's infringement was willful? Yes
2

___ (for Plaintiff)

No

___ (for Defendant)

The Court has not yet construed the disputed claim terms. Depending on the construction of those terms, Affinion may decide not to assert infringement under the doctrine of equivalents for one or more of the asserted claims.

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SECTION II. VALIDITY Question 6: Have Defendant proven by clear and convincing evidence that any of the following claims of the '412 Patent are invalid because they are anticipated?3 Claim 10: Claim 27: Claim 36: Yes Yes Yes ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) No No No ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff)

Question 7: If you answered yes for any claim in response to question 6, state which piece or pieces of prior art anticipate each claim? ______________________________________________________________________________

Question 8: Have Defendant proven by clear and convincing evidence that any of the following claims of the '412 Patent are invalid because they are obvious? Claim 10: Claim 11: Claim 12: Claim 13: Claim 14: Claim 15: Claim 16: Claim 17: Claim 27: Claim 28: Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes ___ (for Defendant) ___ (for Defendant ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) No No No No No No No No No No ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff)

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Maritz has only asserted an anticipation defense for claims 10, 27 and 36. To the extent Maritz is permitted to assert an anticipation defense for additional claims, Affinion requests that those claims be added to the verdict form.

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Claim 29: Claim 30: Claim 31: Claim 32: Claim 33: Claim 34: Claim 36:

Yes Yes Yes Yes Yes Yes Yes

___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant)

No No No No No No No

___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff)

Question 9: If you answered yes for any claim in response to question 8, state which combinations of prior art render each claim obvious? ______________________________________________________________________________

Question 10: Have Defendant proven by clear and convincing evidence that any of the following claims of the '412 Patent are invalid because the correct inventors are not named on the patent? Claim 10: Claim 11: Claim 12: Claim 13: Claim 14: Claim 15: Claim 16: Claim 17: Claim 27: Claim 28: Claim 29: Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes Yes ___ (for Defendant) ___ (for Defendant ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) No No No No No No No No No No No ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff)

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Claim 30: Claim 31: Claim 32: Claim 33: Claim 34: Claim 36:

Yes Yes Yes Yes Yes Yes

___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant) ___ (for Defendant)

No No No No No No

___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff) ___ (for Plaintiff)

SECTION III: FALSE MARKING/FALSE ADVERTISING Question 11: Has plaintiff proven by a preponderance of the evidence that defendant falsely marked its VAULT product as patent pending? Yes ___ (for Plaintiff) No ___ (for Defendant)

Question 12: Has plaintiff proven by a preponderance of the evidence that defendant engaged in unfair competition by falsely marking its VAULT product as patent pending? Yes ___ (for Plaintiff) No ___ (for Defendant)

IF YOU FOUND THAT ANY CLAIM HAS BEEN INFRINGED AND IS NOT INVALID, OR IF YOU ANSWERED YES TO EITHER OF THE QUESTIONS IN SECTION III, GO TO SECTION IV: DAMAGES. OTHERWISE, SKIP TO THE FINAL INSTRUCTIONS ON THE LAST PAGE OF THIS VERDICT FORM.

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SECTION IV: DAMAGES Question 13: State the amount of damages to which you find that plaintiff is entitled for infringement of the '412 Patent:

_________________ Question 14: State the amount of damages to which you find that plaintiff is entitled for False Marking/False Advertising:

_________________

WHEN THE JURY HAS REACHED A VERDICT, THE FOREPERSON SHOULD SIGN THIS VERDICT FORM AND SIGNAL THE U.S. MARSHAL THAT YOU HAVE REACHED A VERDICT.

____________________________________ Jury Foreperson

DATE: ___________

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CERTIFICATE OF SERVICE I, Maryellen Noreika, hereby certify that on September 11, 2006, I electronically filed the foregoing with the Clerk of the Court using CM/ECF, which will send notification of such filing(s) to the following: Patricia Smink Rogowski Connolly, Bove, Lodge & Hutz I also certify that copies were caused to be served on September 11, 2006 upon the following in the manner indicated: BY HAND Patricia Smink Rogowski Connolly, Bove, Lodge & Hutz LLP The Nemours Building 1007 N. Orange Street Wilmington, DE 19801 BY EMAIL J. Bennett Clark Senniger Powers One Metropolitan Square St. Louis, MO 63102

/s/ Maryellen Noreika Maryellen Noreika (#3208) [email protected]