IN THE. UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
AFFINION LOYALTY GROUP, INC., )
Plaiittifi g Civil Action No. 04—360—JJF
)
it- >
MA.R1'I’Z INC., i
Defendant. g
DEQLARATIQN QF 5. BENNETT QLARK
I, I. Beo.r1ettCla.rk, declare as follows:
l. I am a partner in the law fiim of Senniger Powers, and an attorney of record for
defendant Maritz Inc. I am tiling this dcetaration in response to Affmioa Loyalty Group, Incfs
motion for leave to amend. its complaint and to dismiss Maritz’s counterciaims.
2. On January I3, 2006, Atiinion Net Patents, inc. (“ANP") filed two new patent
applications that are cootinuations of the patent applications ofthe patents-·in·suit, U.S. Patent
Nos. 5,'?'?4,8’?() (“the *870 patent"); 6,G09,4l2 ("the *412 patent"); and 6,578,012 ("ti1e ‘Ul2
pateut") and of a patent application with serial mtmber I0/420,901, which was expressly
abandoned on February 24, 2006. ANP fill an Information Disclosure Statement (“ITDS") with
these continuation applications. The IDS disclosures that accompanied these patent applications
included previously undisclosed prior art references and some, but not all, of the litigation
documents and pleadings relating to the patents-i11—suit not previously disclosed to the Patent
Office by Netcentivcs Inc., Thomas Storey, Triicgiant Corporation, or Trilcgiaot Loyalty
Solutions, Inc., but which were made known in litigation proceedings dating back several years.
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3. The *870 paicnt issued cm June: 30, 1998. 'i`§1c claims cf the ‘412 and ‘012 patents
were subj ect to clmfalc patcnting rcj actions in light of we ckaims of the ‘8’?O patcnt. Exhibits A
and B. To circumvent these rejections, tcrminai disclaimers were filed for boil: thc: *41 2 patant
and ‘{}12 patents. Id.
4. in intcrmgatcry responses dated April 15, 2065 and July 18, 2005, plaintiff
identified the foilczwing ctaims as being at issue: in this litigation: *870 patent, claims I and 29;
‘412 patent, claims 1, 10, 18, 27, 35, and 36;ar1d *012 patent, claim 1. Ex. C. On Maxch 17,
2006, Affinicm served amended imtcrrogatcrjr answers, setting forth claims 10 - 17, 27 »· 34 and
36 of thc '412 patent. Ex. D.
5. A few days before March 19, 2006, the deadline for exchanging initial expert
reports, Ms. Sharon Davis, cozuasci for Afiinism, told me t}1atp§aintiffA§i11i0n imcndcd to seek
lcavc to amend its complaint so as to drop its infringement allegations with respect to the *870
and *01 2 patents. She indicated that cnc of thc purposes ofthis action was to attempt to
ziiminatc inz:·quitab¥c conduct issues as to thc ‘8'70 and ‘Gi2 patcnts. She sought my consent to
the motion, but indicated that the filing would occur the next day in any event. In a subsequent
call, i inquired whether plaintiff intended to compensate Maritz for time wastcfully incurred in
dealing with patent claims plaintiff new sought tc remove 50m the GHSE. She indicated this was
a “nc>n-stm·tcr." At no time prior to this telephone conversation did plaintiff indicate that thc
claims identified in plaintiffs April I5 and July 18 intcrwgatcry responses were not the claims at
issue. Only after tiling the pxcscnt motion did p§a.i11tif‘famcud this iutmrogatczy response,
mirroring those addressed in its cxpc;1 reports. Our own cxpcrt reports necessarily addressed thc
prcvi0us§y·idcntiiicd claims, and not any of thc new1y—i
Case 1 :04-cv-00360-JJF Document 1 18-2 Filed O4/05/2006 Page 3 of 4
6. In srmthc}: phone convmsatiou with Ms. Davis, I asked her to identify thc
document xcfcrcncsd in the moving papers as “[t}h¢ 5:st document reflecting that Maritz has
described its VAULT system as ’patcnt }]61'1diI1g¥i1'li¥S sales presentations , ..‘* Pl. Mctitm at 4.
She advised that this referenced Plaintifh Deposition Exhibits 76 and 77. Thcsc are attachcd as
Exhibits E and F tc this declaration.
7. On March 15, 2006, Sharon Davis wmtc 21 lcttcr (Exhibit G), in which plaintiff
mnilatcrally refused to produce Monica Davis, the Rothwell Figg attorney who prosecuted the
patent application that issued as the ‘012 patent. Plaintiff sought to justify this mihsal based cm
AiBni¤11’s Release and Cov:-ma11tN0£ to Sue cxscutcd in conjunction with its pending Motion for
Leave to Amand Its Complaint.
8. Maritz has incuxrcd substantial litigation cxpcnsc as a result of Afiinicrfs previous
assertion of all three patents. For instance, Maritz retained thc services of Br. Arthur Keller and
Bruce Bulger to saws as cxpcnc witnesses in this cass. Dr. Ksllcr is a. distinguished author,
professor, and consultant in the field of electronic commerce and database management. Dr.
Kcllcr’s initial expert report addxesscd the validity of claim 29 of thc ‘S'?0 patent, a patent
plsintiffnow sacks to rcmcvc from thc cass. Dr. Keller spent many hours analyzing issues and
preparing his expert report.
9. Mr. Bulger is an expert in the incentives field. His initial report addressed the
validity of the ass¢:1·tc:»d claims from the ‘S70, ‘412, and *012 patents. Thus, much cf Mr.
Bolgcfs initial effort was expanded cm patent claims that Afiinicn no longs: asserts.
I declare under penalty of pcxjury that the foregoing is tmc and comsmt, to the best of my
knowledge, information and b•:lic£
3
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Executed cm March 31, 2006:
Jgcéltt Clark
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