author: GEORGE KENDALL SHARP, District Judge.

text:
    Alan THORNQUEST, Plaintiff, v. Maxwell KING, President of Brevard Community College; and Brevard Community College, Defendants.
    No. 83-356-ORL-CIV-18.
    United States District Court, M.D. Florida, Orlando Division.
    July 25, 1985.
    John J. Chamblee, Jr., Tampa, Fla., for plaintiff.
    Jesse S. Hogg, Coral‘Gables, Fla., for defendants.
   OPINION AND ORDER

GEORGE KENDALL SHARP, District Judge.

This case is before the Court upon defendants’ motion to dismiss for lack of subject matter jurisdiction and plaintiff’s response thereto. The Court has also had the benefit of the supplemental memoranda and materials filed in response to the Court’s request for additional information concerning the source of funds from which any judgment for plaintiff would be paid.

STATEMENT OF FACTS

In this action under 42 U.S.C.A. § 1983 for declaratory and injunctive relief and damages, plaintiff alleges that defendants deprived him of his Fourteenth Amendment due process rights and his First Amendment rights of expression and association. The gravamen of plaintiff’s complaint is that he was denied a continuing contract, i.e. tenure, by defendant Brevard Community College (BCC) in retaliation for his involvement with a certified public employee organization.

Plaintiff, a Florida citizen, has been employed by defendant BCC since 1974, most recently as a guidance counselor. Defendant King is and was at the time plaintiff’s claim arose in March, 1983, president of BCC, a community college organized under and governed by the laws of Florida. Defendant King has been sued only in his official capacity. Plaintiff was awarded tenure subsequent to the institution of this suit.

BCC receives its primary operating funds from the Florida legislature through the State Community College Fund (Fund). Fla.Stat. §§ 240.345(1), 240.347, 240.349. The legislature approves general appropriations for the Fund, and the State Board of Education determines the specific appropriations for BCC based upon a statutory formula which takes into account the level of enrollment and cost level of study. See Fla.Stat. § 240.359. BCC’s sources of revenue are divided into three classifications:

(1) General Current Fund, comprised of total student fees, total state support for operating costs and miscellaneous income; (2) Restricted Current Fund, comprised wholly of federal grants; and (3) Unexpended Plant Funding, which is state funding for construction funded solely by the state through the sale of state bonds. Fla. Const. Art. XII § 9(d)(3); Fla.Stat. §§ 240.-359(2), 240.359(3)(f). The federal grant money may only be expended in accordance with federal grant provisions; therefore, the Restricted Current Fund is not available to satisfy any judgment. Similarly, the state bond funding which comprises the Unexpended Plant Funding is not available because it is restricted to capital projects unless express authorization is given by the State Board of Education. Thus, the critical budgetary category for purposes of this motion is the General Current Fund. In the academic year 1984 — 1985, state support amounted to almost 76% of this fund. Student matriculation and tuition fees contributed just over 20% of the operating budget, and miscellaneous items such as interest income contributed almost 4% of the General Current Fund. All such operating budget funds, regardless of their source, are placed in a single depository by BCC pursuant to a rule promulgated by the BCC Board of Trustees.

In their motion to dismiss, defendants argue that all of plaintiff’s claims against the college and its president except his claim for prospective equitable relief are barred by the Eleventh Amendment. Defendants seek to establish that BCC is an arm of the state, and thereby entitled to the Eleventh Amendment grant of sovereign immunity. Defendants claim that plaintiff’s request for prospective equitable relief is moot since plaintiff was awarded tenure subsequent to the initiation of this suit. Defendants’ motion presents the interesting and difficult question of whether Florida community colleges are arms of the state such that they are entitled to the protection of Eleventh Amendment immunity.

CONCLUSIONS OF LAW

The Court has jurisdiction over this § 1983 suit under 28 U.S.C. §§ 1331, 1343. Assertions of immunity under the Eleventh Amendment. deprive federal courts of jurisdiction over certain claims, and are regarded as in the nature of subject matter jurisdiction. Pennhurst State School & Hospital v. Halderman, 465 U.S. 89, 99 n. 8, 104 S.Ct. 900, 907 n. 8, 79 L.Ed.2d 67, 77 n. 8 (1984). Thus, an Eleventh Amendment claim may be raised at any time, id., Fed.R.Civ.P. 12(h)(3), and defendants’ motion is timely.

The Eleventh Amendment provides:
[t]he Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another state, or by Citizens of Subject or any Foreign State.

Further, this amendment has consistently been construed as barring claims brought against a state in federal court by one of its own citizens. Pennhurst State School & Hospital v. Halderman, 465 U.S. at 100, 104 S.Ct. at 908, 79 L.Ed.2d at 78. Under the Eleventh Amendment, states are immune from money damages in suits under 42 U.S.C.A. § 1983. Quern v. Jordan, 440 U.S. 332, 99 S.Ct. 1139, 59 L.Ed.2d 358 (1979). Eleventh Amendment immunity extends to states and state officials, but not to independent political entities such as counties or municipalities. Tuveson v. Florida Governor’s Council on Indian Affairs, Inc., 734 F.2d 730, 732 (11th Cir. 1984); Fouche v. Jekyll Island State Park Authority, 713 F.2d 1518, 1520 (11th Cir. 1983). Thus, the issue which the Court must determine is whether BCC is an “arm of the state” entitled to Eleventh Amendment immunity, or whether it is an independent political entity comparable to a city or county.

BCC’s Eleventh Amendment status is a matter of federal law. See, e.g., Hutchins v. Board of Trustees of Michigan State University, 595 F.Supp. 862, 866 (W.D. Mich.1984). However, in making the determination of BCC’s status, the Court must look to the state law creating and defining community colleges and to their character and functions. See Brown v. East Central Health District, 752 F.2d 615, 617 (11th Cir.1985); Tuveson v. Florida Governor’s Council on Indian Affairs, Inc., 734 F.2d at 732; Fouche v. Jekyll Island State Park Authority, 713 F.2d at 1520; Sessions v. Rusk State Hospital, 648 F.2d 1066, 1069 (5th Cir.1981). “Aspects of state law particularly relevant to this inquiry are: how state law defines the entity; what degree of control the state maintains over the entity; where funds for the entity are derived; and who is responsible for judgments against the entity.” Tuveson v. Florida Governor’s Council on Indian Affairs, Inc., 734 F.2d at 732 (citations omitted). Although some courts of appeals regard who ultimately pays as the most crucial factor, a recent Eleventh Circuit decision indicates that this circuit gives special attention to how the entity is treated by the state courts. Id. However, in Brown v. East Central Health District, 752 F.2d at 617-618, an Eleventh Circuit panel in its explication of Eleventh Amendment analysis focused on fiscal considerations such as the source of the entity’s funds and the entity’s authority to issue bonds or levy taxes.

The issue of whether or not Florida community colleges are arms of the state entitled to Eleventh Amendment immunity has not been definitively addressed. However, the immunity issue has been decided with regard to other Florida educational entities. In Byron v. University of Florida, 403 F.Supp. 49, 51 (N.D.Fla.1975), the court indicated that the university was a political instrumentality of the State of Florida. Conversely, the former Fifth and Eleventh Circuits have compared county school boards to municipalities and concluded that county school boards are not the type of entities sheltered by the Eleventh Amendment. Travelers Indemnity Company v. School Board of Dade County, 666 F.2d 505, 507-509 (11th Cir.1982); Campbell v. Gadsden County District School Board, 534 F.2d 650, 655-656 (5th Cir. 1976); Adkins v. Duvall County School Board, 511 F.2d 699, 693 (5th Cir. 1975). In determining that Florida county school boards are not immune under the Eleventh Amendment, the Fifth Circuit in Gadsden emphasized that awards against such entities are not barred “so long as the entities sued are locally controlled, essentially local in character, and the funds to defray the award would not be derived primarily from the state treasury.” Campbell v. Gadsden County District School Board, 534 F.2d at 656 (citations omitted).

A review of the Florida statutes creating and governing the state university system, the community college system, and the district school system, see Fla.Stat. §§ 240.-301-240.379, convinces the Court that community colleges occupy an intermediate position between the state-oriented university system and the local county school boards in both function and legal status. Thus, the Court faces the difficult task of determining whether for Eleventh Amendment purposes community colleges are comparable to state universities or to county school boards, counties and municipalities.

Three decisions of the Court of Appeals for the Fifth Circuit provide the Court with guidance in analyzing this particular Eleventh Amendment problem. In Hander v. San Jacinto Junior College, 519 F.2d 273 (5th Cir.1975), the former Fifth Circuit examined the powers, nature and characteristics of Texas junior colleges under Texas law and determined that these entities are “not alter egos of the state but are primarily local institutions created by local authority and supported largely by local revenues.” Id. at 279. The Court in Hander noted that one Texas state law provision reserved all authority not vested in the coordinating board by statute in the local junior college districts. The Hander Court emphasized that under the statutory framework in question establishment of Texas junior colleges began with a local initiative petition to the county school board, followed by a determination by the state coordinating board that the junior college would benefit the state as well as the community. Id. The Court noted that a district-wide referendum was then held, at which time the district electorate selected the board of trustees. Id. The Court in Hander also noted that under the Texas statute junior colleges were authorized to issue revenue bonds and levy annual ad valorem taxes, and that by statute state appropriations were made in an amount sufficient to supplement local funds. Id. The Court concluded that Texas junior college districts are accorded the same legal status as independent school districts, and are not immune under the Eleventh Amendment. The Hander decision was followed in Goss v. San Jacinto Junior College, 588 F.2d 96, 98 (5th Cir.1979). In contrast, the Fifth Circuit in Jagnandan v. Giles, 538 F.2d 1166, 1172-1176 (5th Cir. 1976), held that claims against officials of Mississippi State University were barred by the Eleventh Amendment. In Jagnandan, the Court held that the university was immune because of state control over its finances and because state decisional law which treated the university as an arm of the state.

With this precedent in mind, the Court turns to the application of the four factors listed in Tuveson to Florida community colleges. Tuveson v. Florida Governor’s Council on Indian Affairs, Inc., 734 F.2d at 732. The first two Tuveson factors, how state law defines the entity and what degree of control the state maintains over the entity, involve many overlapping considerations and will be analyzed together. Although community colleges are legal entities defined by statute as political subdivisions of the state, Fla.Stat. §§ 240.313, 240.317, a review of the statutes creating, defining and governing Florida community colleges convinces the Court that they are not independent political entities of the type which fall outside the protection of the Eleventh Amendment.

Florida community colleges are defined separately from both public schools, i.e. kindergarten through secondary grades, and institutions of higher education, i.e. all state-supported educational institutions offering work above the public school level other than community colleges. Fla.Stat. § 228.041. The primary function of community colleges is to respond to community needs for postsecondary academic and vocational education. Fla.Stat. § 240.301(2). The State Community College System is operated by the State Board of Community Colleges, which is comprised of the Commissioner of Education, one student and 11 lay citizens appointed by the Governor, approved by four members of the State Board of Education and confirmed by the Senate. Fla.Stat. § 240.307. The State Board serves as director of the Division of Community Colleges of the Department of Education, Fla.Stat. § 240.311(1), and provides statewide leadership in overseeing and coordinating the colleges, although maximum local autonomy is preserved. Fla. Stat. § 240.305. Among its many supervisory duties, the State Board is required to advise community college presidents of the fiscal policies adopted by the legislature and their responsibilities to follow those policies, Fla.Stat. § 240.311(3)(e), and must review and approve all budgets in the State Community College System. Fla.Stat. §§ 240.311(5)(a), 240.361. All community college funds must be accounted for and expended in accordance with the rules and regulations of the State Board of Education. Fla.Stat. § 240.363.

The individual community college districts are governed by a board of trustees. In contrast to the elected county school board members, Art. IX, § 4, Fla.Const.; Fla.Stat. §§ 230.04, 230.10, community college boards are appointed by the Governor, approved by four members of the State Board of Education, and confirmed by the Senate. Fla.Stat. § 240.313(3). One of the stated purposes in the title of the 1979 act which reorganized and consolidated the postsecondary education provisions of Florida law was to create community college Boards of Trustees and provide them with powers similar to university Boards of Trustees. Ch. 79-222, Laws of Fla. Each board is vested with the authority to operate the college in accordance with the rules of the State Board of Education and State Board of Community Colleges. Fla.Stat. § 240.319(1). State funding for community colleges is handled through the State Community College Program Fund, and is apportioned and distributed on the basis of a statutory formula and regulations of the State Board of Education. Fla.Stat. §§ 240.347, 240.359. Community colleges may not expend public funds to acquire additional property without the specific approval of the Legislature. Fla.Stat. § 240.-327(2).

As this survey of the Florida statutes reveals, community colleges are governed by a complex network of state statutes, rules, and regulations. Although local autonomy is preserved to the extent possible in order that community postsecondary academic needs may best be served, the governing body of community colleges is appointed, approved and confirmed by state officials and legislators, and has duties similar to those of the boards of trustees for universities. District boards are accountable, especially in fiscal matters, to the State Board of Community Colleges and the State Board of Education. Additionally, as discussed in detail below, the state legislature provides the primary source of funds for community colleges. In summary, although local interests are necessarily a major concern for community colleges, the state through both the executive and legislative branches exerts substantial control over community colleges, notably through selection of the governing officials, funding, and review of fiscal matters, and the state community college system advances the state-wide goal of enhancing postsecondary education.

If the Court were to view the issue of how state law defines the entity narrowly, the Eleventh Amendment might not cloak community colleges with immunity since the statute defines such college)districts as political subdivisions. However, a review of the statutes creating and governing community colleges and the community college system in Florida shows that these colleges are not independent political entities comparable to municipalities, counties or district school boards. Community colleges, while they serve community needs, are not local in character in the same sense as district school boards. Unlike municipalities, counties and district school boards, community colleges are controlled by the state rather than the local electorate. Community colleges serve the state goals of making postsecondary education available to a greater number of people and of relieving part of the demands on the state university system for postsecondary education. Further, unlike municipalities, counties and school districts, community college districts do not have the power to issue bonds and levy taxes. Art. VII, § 9, 12, Fla.Const. Although students at community colleges presumably are primarily local residents, they are not limited to district residents. Finally, the statutory provision which required that junior or community colleges could be established only at the request of district school boards was repealed in 1979. See Ch. 79-222, § 121, Laws of Florida. As this survey of the Florida statutes shows, the factors which persuaded the courts in Gadsden and Hander that district school boards and Texas junior colleges are not immune under the Eleventh Amendment do not apply in this case because of the differing statutory framework and goals which Florida has adopted for its community colleges.

A review of the changing status of Florida community colleges over the past two decades also persuades the Court that community colleges as currently organized are arms of the state. Under the 1967 statutes, Florida community colleges were established at the initiative of the county board, Fla.Stat. § 230.0101, and were a part of the county school system under the control of the county school board. Fla. Stat. § 230.0102 (1967). Each college had a president responsible to the county board through the county superintendent, Fla. Stat. § 230.0102, and a non-voting advisory committee to advise the county board on community college matters. Fla.Stat. § 230.0103. Each county operating a college was required to make efforts to contribute a statutorily apportioned amount to the state fund for community colleges. Fla.Stat. §§ 230.0111,' 230.0117(7).

By 1971, the state legislature had removed community colleges from the supervision of the county boards and provided for community college districts and boards of trustees with independent corporate status to operate the colleges. Fla.Stat. § 230.753, 230.754 (1971). Further, the county was no longer required by statute to contribute to community college funding. Fla.Stat. §§ 230.761, 230.767. These changes are especially significant because removal of community colleges from county board control meant that the board operating the college no longer had authority to levy taxes or issue bonds. Establishment of new community colleges remained a matter limited to district school board initiative, Fla.Stat. § 230.752, and the provisions governing community colleges remained as part of the chapter governing and titled “The District School System.” Fla.Stat. §§ 230.01-230.776.

In 1979, the legislature reorganized the Florida postsecondary education system, removing the sections covering community colleges from the district school system and consolidating the provisions governing state university and community college systems and other provisions in one chapter titled “Postsecondary Education.” See Ch. 79-222, Laws of Fla.; Fla.Stat. §§ 240.105-240.603 (1983). In the 1979 act, the legislature enunciated the state-wide goals for the postsecondary education, Fla.Stat. § 240.-105, and also set forth the previously unspecified state mission and responsibilities of community colleges. Fla.Stat. § 240.-301. The section limiting establishment of new community colleges to the initiative of local school boards was repealed. Ch. 79-222, § 121, Laws of Fla.

In the 1979 act, the legislature specified that community colleges are political subdivisions of the state. Fla.Stat. § 240.317. The legislative history of the 1979 act is silent as to why this provision was amended. However, the Court’s review of the evolution of Florida community colleges over the past twenty years leads to the conclusion that this section is a culmination of the legislature’s gradual shift of primary control over community colleges from county to state authorities. Section 240.-317 appears to be an affirmation that community colleges are within the state heirarchy of postsecondary education rather than merely an extension of district school programs. From this review of Florida law, the Court concludes that community colleges are arms of the state comparable in Eleventh Amendment analysis to state universities rather than to district school boards, counties or municipalities.

In assessing whether or not particular entities are immune under the Eleventh Amendment, the Eleventh Circuit, at least according to the Tuveson Court, accords special weight to how the entity is treated by the state courts.- Unfortunately, Florida case law gives little guidance to the Court in determining how state law regards the entity. In Board of Public Instruction v. State Treasurer, 231 So.2d 1, 4 (Fla.1970), the Court noted that community colleges serve “a distinctly local function.” However, as noted above, community colleges also serve important statewide postsecondary educational functions. The Supreme Court of Florida’s comment in Board of Public Instruction v. State Treasurer, 231 So.2d at 4, merely serves to highlight the hybrid character and purpose of community colleges. Similarly, the fact that the state attorney general has indicated that community colleges are not state agencies for certain fiscal and administrative purposes does not preclude Eleventh Amendment immunity. See Atty.Gen.Op. 071-175 (June 30, 1971). This opinion was issued prior to reorganization and consolidation of the postsecondary education provisions of Florida law. Further, one of the primary reasons for determining that community colleges were not state agencies was the joint financial support by local school districts and the state. This rationale does not apply to BCC, which receives little, if any, local funding.

The third factor enumerated in Tuveson is where funds for the entity are derived. Under Florida law, community colleges have no authority to issue revenue bonds or levy taxes. This is a critical distinction between community colleges and district school boards. This fact also distinguishes Florida community colleges from the Texas junior colleges considered in Hander. As summarized in the statement of facts, 76% of BCC’s operating budget is derived from state appropriations, while just over 20% is funded by student tuition and fees and 4% is derived from miscellaneous sources such as interest income. In Travelers Indemnity Company v. School Board of Dade County, 666 F.2d 505 (11th Cir.1982), the Eleventh Circuit commented that Eleventh Amendment immunity is available only if satisfaction of the judgment must under all circumstances be paid out of state funds. Plaintiff relies on this language in support of its argument that any judgment he obtained could be paid out of funds derived from student tuition and fees or miscellaneous income rather than from funds obtained through state appropriations. Thus, plaintiff argues, his claims are not barred by the Eleventh Amendment.

However, a number of courts in this circuit and elsewhere have held that entities which received less than 100% state funding are immune under the Eleventh Amendment. In Gadsden, the Fifth Circuit wrote in terms of an award from funds derived primarily from the state treasury, and in Jagnandan the university was held immune from refund payments in a suit to recover tuition fees even though state appropriations comprised no more than 72% of its budget. Campbell v. Gadsden County District School Board, 534 F.2d at 655-656; Jagnandan v. Giles, 538 F.2d at 1175-1176. Similarly, in Hall v. Medical College of Ohio, 742 F.2d 299, 304-305 (6th Cir.1984), the Sixth Circuit indicated that where appropriated funds were gauged to the amount of self-generated funds, the link between unsegregated appropriated and non-appropriated funds renders any judgment against the school a liability payable from the state treasury. In Hutchins v. Board of Trustees of Michigan State University, 595 F.Supp. at 865, the Eleventh Amendment barred a damages award even though state appropriations accounted for only 36% of Michigan State University’s total funds.

Finally, the Court concludes that the reasoning of the Eleventh Circuit in Fouche v. Jekyll Island State Park Authority, 713 F.2d at 1521, which involved a similar issue, settles the issue of partial state funding in defendants’ favor. In Fouche, an Eleventh Circuit panel held that a Georgia state park authority was immune under the Eleventh Amendment despite evidence that in prior years the authority was self-supporting and received no appropriated state funds. Id. The Fouche Court indicated that recovery in the action would be from state funds because the state would be responsible for any of the authority’s debts which could not be paid out of its revenues. Thus, the fact that BCC’s revenues are not derived solely from the state does not preclude Eleventh Amendment immunity. The amount of state appropriated funds available to BCC under the Board of Education formula depends in part upon resources available from student fees and tuition. Thus, a reduction in student generated funds would require an increase in state funding. Because the net effect of a judgment paid out of student generated fees would be to require increased appropriations to BCC from the state through the State Community College Program Fund, the Eleventh Amendment bar to interference with the state’s fiscal autonomy would apply. See, e.g., United Carolina Bank v. Board of Regents, 665 F.2d 553, 560 (5th Cir. Unit A 1982) (relying upon Jagnandan v. Giles, 538 F.2d at 1176).

The final factor before the Court is who is responsible for judgments against the entity. Because community college districts and their boards are separate legal entities which may make contracts, sue and be sued, Fla.Stat. §§ 240.313(1), 240.-319(3)(c), it appears that judgment could validly be entered against BCC. However, the fact that community colleges are corporate entities which may sue and be sued does not preclude a finding that they are arms of the state. See Tuveson v. Florida Governor’s Council on Indian Affairs, Inc., 734 F.2d at 732. Community colleges are authorized to be self-insured, to enter into risk-management programs, or to purchase insurance (or any combination thereof) to cover all losses and expenses incurred in defending civil actions against officers, employees or agents of the district board of trustees. Fla.Stat. § 240.375. However, the funds for self-insurance or insurance premiums would necessarily be derived in large part from state appropriated funds, and judgments against state risk management trust funds are regarded as judgments assumed by the state. See Tuveson v. Florida Governor’s Council on Indian Affairs, Inc., 734 F.2d at 734. Thus, regardless of the choice of a community college as to self-insurance, insurance or risk management, the funds ultimately would be derived from the state treasury. Therefore, analysis of this factor indicates that Florida community colleges should be considered an arm of the state for Eleventh Amendment purposes.

Finally, the Eleventh Amendment bars recovery of money damages not only against an arm of the state, but also against officials of such entities sued in their official capacity. See Pennhurst State School and Hospital v. Halderman, 465 U.S. at 101 and n. 11, 104 S.Ct. at 908 and n. 11, 79 L.Ed.2d at 79 and n. 11; Glover v. Alabama Department of Corrections, 734 F.2d 691, 695 (11th Cir.1984); Williams v. Bennett, 689 F.2d 1370, 1374, 1376, 1378 (11th Cir.1982). In plaintiff’s complaint, defendant King is sued as president of BCC. Thus, plaintiff’s damages claims against defendant King also are barred by the Eleventh Amendment because he is sued only in his official capacity. Plaintiff’s damages claims are barred by the Eleventh Amendment, and his claims for prospective injunctive relief are rendered moot by BCC’s subsequent grant of tenure. Therefore, it is

ORDERED that defendants’ motion to dismiss for lack of subject matter jurisdiction is GRANTED; plaintiff’s complaint is DISMISSED without prejudice to the right of plaintiff to seek to raise his claims in a court of competent jurisdiction.


source: Caselaw Access Project

author: FORRESTER, District Judge.

license: Public Domain

text:
    SLIMFOLD MANUFACTURING COMPANY, INC., Plaintiff, v. KINKEAD PROPERTIES, INC. and United States Gypsum Company, Defendants.
    Civ. A. No. C78-1798A.
    United States District Court, N.D. Georgia, Atlanta Division.
    July 25, 1985.

      Jones & Askew, Robert E. Richards, Atlanta, Ga., for plaintiff.
    Patrick F. Henry, Sr., Frank Love, Jr., James Hawkins, Atlanta, Ga., Robert H. Robinson, U.S. Gypsum Co., Chicago, Ill., for defendants.
   ORDER

FORRESTER, District Judge.

This patent infringement action is before the court on defendants’ motion for summary judgment. The past history of this litigation is set out in detail in the court’s order of November 19, 1984. Slimfold Manufacturing Co. v. Kinkead Products, Inc., 600 F.Supp. 1015 (N.D.Ga.1984).

THE REISSUED PATENT

Plaintiff commenced this action on October 20, 1978, alleging that the defendants had infringed United States Patent No. 3,810,274 (hereinafter referred to as the ’274 patent). The ’274 patent was issued to plaintiff on May 14, 1974, and pertains to a “Pivot and Guide Rod Assembly for Bi-Fold Door.” Defendants moved early in this litigation to compel plaintiff to submit to a reissue proceeding pursuant to 35 C.F.R. §§ 251. Judge Robert Hall granted the motion of the defendants, and plaintiff was compelled to submit to reissue proceedings.

On April 17, 1984 the PTO reissued the ’274 patent as United States Patent No. 31,553 (hereinafter referred to as the “Ford patent”). The Ford patent contains claims almost identical to the claims contained in the '274 patent except for the addition of one element in claim 1 of the patent required by the examiner as a condition for reissuance. The examiner noted in the course of the reissue proceedings that claims 1-3 would be rejected as vague and indefinite since no antecedent basis was present for the term “said collar” in the last line of claim l. The examiner pointed to the second paragraph of 35 USC § 112 requiring claims “particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention,” and required that claim 1 be amended to provide an antecedent basis for the recitation of “said collar.” The requirements of 35 USC § 112 are stated specifically in 37 CFR § 1.75(d)(1):

The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the descriptions so that the meaning of the terms in the claims may be ascertainable by reference to the description.

One commentator has described this particular requirement as follows.

[A] foundation or an antecedent basis must be laid for each element recited. This can be done, usually in the preamble, by introducing each element with the indefinite article (“a” or “an”). Subsequent mention of the element is to be modified by the definite article or by “said” or by “the said,” thereby making the latter mention(s) of the element unequivocally referable to its earlier recitation.

P. Rosenberg, 2 Patent Law Fundamentals § 14.06 (2d Ed.1984).

In accordance with this practice, claim 1 was amended prior to reissuance, and the phrase “a collar on said sleeve” was added so that the collar clearly appears as an element in the claim.

This action is now before the court on the defendants’ first motion for summary judgment which asks the court to hold that defendants’ bi-fold door assembly does not infringe plaintiff’s patented invention. Summary judgment is appropriate only if “there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law.” Fed.R. Civ.P. 56(c). The moving party bears the burden of demonstrating that there is no dispute as to a material fact. Warrior Tombigbee Transportation Co., Inc. v. M/V Nan Fung, 695 F.2d 1294, 1296 (11th Cir.1983). As the Court of Appeals for the Federal Circuit has noted,

Many, if not most, suits for patent infringement give rise to numerous and complex fact issues, rendering those suits inappropriate for summary disposition. Where no issue of material fact is present, however, courts should not hesitate to avoid an unnecessary trial by proceeding under Fed.Rule Civ.P. 56 without regard to the particular type of suit involved.

Chore-Time Equipment v. Cumberland Corp., 713 F.2d 774, 778-79 (Fed.Cir.1983). With this standard and guidance, in mind, the court will consider the grounds for defendants’ motion for summary judgment as to each of the claims of the ‘274 patent and the Ford patent which are allegedly infringed by defendants’ doors.

THE EFFECT OF THE REISSUE PATENT

Defendants’ first argument in support of summary judgment hinges on the effect of the reissued patent upon the original patent. Defendants allege that the ‘274 patent cannot be infringed because it was surrendered upon the issuance of the Ford patent on April 17, 1984. In light of the fact that defendants have not manufactured or caused to be manufactured any bi-fold doors since January 3, 1980, defendants argue that they cannot be said to have infringed the Ford patent. The first paragraph of 35 USC § 252 sets out the effect of a reissued patent upon the original patent:

The surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but insofar as the claims of the original and reissued patents are identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.

It is the defendants’ contention that the alteration made in claims 1-3 when the plaintiff provided an antecedent basis for the phrase “said collar” in claim 1 renders these claims changed for the purposes of 35 USC § 252. Defendants argue that this alteration broadened claims 1-3, and that these claims in the Ford patent are not identical with the same claims in the ‘274 patent.

A determination of whether claims 1-3 in the ‘274 patent continue in effect for the purposes of plaintiff’s suit for infringement requires an interpretation of the word “identical” in 35 USC § 252. This problem of interpretation arose recently in a patent infringement action involving shipping bundles for oil pipe lengths. Seattle Box Co. v. Industrial Crating and Packing, Inc., 731 F.2d 818 (Fed.Cir.1984). The patent holder amended a claim in the reissue patent by adding the words “substantially equal to” to the words “greater than” when describing the height of spacer blocks in the shipping bundles when compared to the diameter of the pipe lengths. Id. at 822. While the court refused to decide exactly what “identical” means in 35 USC § 252, it stated that “[i]t is clear, though, that ‘identical’ means, at most, ‘without substantive change.’ ” Id. at 827-28. It was the opinion of the court that the addition of the words “substantially equal to” made a substantive change in the plaintiff’s claims, and was not merely a clarification of language intended to make specific what was always implicit or inherent. Id.

This approach to the meaning of section 252 finds support in other cases. In Johnston v. Textron, 579 F.Supp. at 783, 790-93 (D.R.I.1984) the same “substantial change” standard was used. That case involved the alleged infringement of a patented slide clasp which served as a coupling device. During the prosecution of the plaintiff’s reissue application, certain limitations were added to one of the claims. In particular, the reissued patent was narrowed by requiring that the outer holding member consist of a single piece of folded metal “folded on itself.” The original claim regarding the outer holding member did not require that it consist of a single piece of metal. Id. at 789-90. This change and others like it convinced the court that the reissued claims were not substantially identical to that of the original patent.

In these two cases the substantive changes in the scope of claims in a reissued patent rendered the plaintiff vulnerable to a defense of intervening rights. Contrasting cases involve a modification of the wording of a claim so as to “clarify and make more precise the language used without substantive changes in the claims. The doctrine of intervening rights is inapplicable where claims of a reissued patent are substantially identical to those of original patent.” Austin v. Marco Dental Products, Inc., 560 F.2d 966, 973 (9th Cir.1977), cert. denied, 435 U.S. 918, 98 S.Ct. 1477, 55 L.Ed.2d 511 (1978) (citations omitted). Such modifications can take the form of a correction of an error in the original claim which was not misleading. For example, in Akron Brass Co. v. Elkhart Brass Manufacturing Co., 353 F.2d 704 (7th Cir.1965), the court held that substitution of the word “outlet” for the word “inlet” was not a substantive change in the original claim in light of other language in the original claim which sufficiently disclosed the critical fact sought to be disclosed by substitution of the word “outlet.” The court concluded that the claims in the original patent and reissued patent were essentially identical and that the corrections made did not “in any way enlarge or modify the substance of claim three as it appears in the original patent.” Id. at 708.

Modification of language merely intended to eliminate ambiguity in the original claim is also permissible. For example, in a case involving a modification similar to that made in claims 1-3 of the Ford patent, the court found that the addition of a word to conform with reference to the word earlier in a claim was was not a change which rendered the claim substantially different. Greer Hydraulics, Inc. v. Rusco Industries, Inc., 185 U.S.P.Q. 83, 85, 92 (C.D.Cal. 1974). The court concluded that “[t]he wording of claims in a reissue patent may differ from the original wording in the original claims of the original patent without the reissue claims being treated differently for the purpose of defeating a claim of intervening rights.” Id. at 92 (citations omitted); see also Corometrics Medical Systems, Inc. v. Berkley Bio-Engineering, Inc., 193 U.S.P.Q. 467, 478 (N.D.Cal.1977). Another example of modification of language in a claim merely for the purpose of eliminating ambiguity is found in Richmond Engineering Co. v. Bowser, Inc., 264 F.2d 595 (4th Cir.1959). There was ambiguity in the original patent because of references to “having inlet and outlet conduits” as well as “fuel outlets” and “water outlets” in describing a water-fuel separator tank. In order to avoid the inference that there were outlets in addition to the fuel and water outlets, the phrase in the original claim was amended to read “having a fuel inlet and a fuel outlet.” The court concluded that these changes merely eliminated ambiguity and did not change the scope of the claims of the original patent. Id. at 598.

The extent to which compliance with the requirement of an antecedent basis is also merely an elimination of ambiguity in a claim is illustrated by the decision of the Court of Customs and Patent Appeals in the Application of Altenpohl, 500 F.2d 1151 (CCPA 1974). In this case, an applicant sought a reissue of its patent based on the lack of an antecedent basis for the phrase “said support posts.” The reissued claim in this case read:

The combination of claim 10 wherein said stationary component includes a support post, said locking means [is] being slidably and guidingly mounted upon said support post and [has] having oppositely disposed locking services each abuttingly engaged with one of said locking portion locking services.

Id. at 1156 (emphasis in original indicating alterations of original claim). Both the examiner of the reissue application and the Board of Patent Appeals found no merit in the application based on the lack of antecedent basis for the phrase “said support post” because such a change failed to alter the scope of the original claim. Id. Despite the fact that the addition of an antecedent basis or the phrase “said support post” did not alter the scope of the original claim, the Court of Customs and Patent Appeals held that the applicant was entitled to reissuance with regard to the claim lacking an antecedent basis. The court held that merely because the element of a support post was included by implication in the original claim did not deprive the applicant of the right to a reissued claim. The court concluded that

lack of antecedent basis in a claim can render it invalid under 35 USC § 112, second paragraph, and correction of such a defect by reissue should not have to depend on difference and scope of the claim ... a patentee should be allowed to correct an error or ambiguity in a claim without having to rely on implication or litigation.

Id. While this decision is limited to the right of an applicant to a reissued patent under 35 USC § 251, it may be read as indicating that the addition of words to provide an antecedent basis does not change the scope of a claim.

Some courts have gone so far as to look to the drawings and specifications of the original patent when proving that changes in language of a claim merely eliminated ambiguity. One such court addressed the substitution of the phrase “a flexible inverted generally U-shaped strap” for the phrase “a flexible inverted V-shaped strap” as well as the addition of a description of a strap for a patented plastic and metal luggage handle. General Plastic Corp. v. Finkelstein, 145 F.Supp. 862 (E.D.Penn. 1956). With regard to the correction of language regarding the shape of the strap, the court noted that “it is elementary that the claim is to be read in light of the disclosure on the specification.” Id. at 863. Based on the drawings, the court recognized that the change was merely a correction of a mistaken description and did not change the scope of the claim. Id. With regard to the additional description concerning the strap, the court noted that the claim in the original patent, when read in conjunction with the original specifications, gives the strap a useful function it otherwise would not have had. The court concluded that:

When plaintiff added the description to the end of claim 1 of the reissue, he was merely stating what was already there by implication. Therefore, claim 1 of the reissue is identical to the claim of the [original] patent. And if the defendant has infringed the claim of a latter, he has infringed claim 1 of the reissue.

Id. at 863-64; see also Eagle Iron Works v. McLanahan Corp., 429 F.2d 1375, 1386 (3d Cir.1970).

In light of the foregoing authorities, it is evident that defendants have not carried their burden of proving that they are entitled to judgment as a matter of law as to claims 1-3 of plaintiffs patent. When plaintiff amended the ‘274 patent at the reissue proceeding to provide an antecedent basis for the phrase “said claim,” plaintiff did not alter the substantive scope of the claims. The addition of the phrase “A collar on said sleeve” eliminated ambiguity and made clear that the collar was an element of the plaintiffs claim. If the drawings and specifications of the ‘274 patent are considered in conjunction with the language “said collar,” then it is clear that the collar was an intended element of the claim. The “Detailed Description Of The Invention” in the ‘274 patent reads in part as follows:

The pivot assembly of the invéntion comprises an elongated plastic sleeve 30 of nylon or other suitable material which extends through cooperating openings 32, 34 and the flanges 18, 20, respectively. Formed on the upper end of the sleeve is an integral collar, 26, which abuts the outer surface of the flange 18 adjacent the upper edge of the panel 10. An integral post extends outwardly from one side of the collar substantially perpendicular to the sleeve 30____

This “integral collar” on the upper end of the sleeve appeared in a corresponding drawing in the ‘274 patent and clearly was meant to provide positional stability for the sleeve. In short, the original claim language, specification and drawings give the collar a useful purpose in the patented device. This case falls in the category of cases described above in which the change in the language of a claim was merely a change in wording meant to clarify and make more precise the language used without enlarging or otherwise altering the substance or scope of the claim. The defendants’ motion for summary judgment as to claims 1-3 is DENIED.

CLAIM 4

The remaining claim as to which defendants allege they are entitled to a judgment of non-infringement as a matter of law is claim 4. Claim 4 of the Ford patent is identical with claim 4 of the ‘274 patent, and consequently does not present any issue of claim continuity. Nevertheless, defendants proffer arguments that claim 4 is neither literally infringed nor infringed when the doctrine of equivalents is applied. The court does not feel confident in its understanding of the motion and response as it relates to claim 4 and would benefit from oral argument. Therefore, oral argument on this matter is scheduled for Aug. 15, 1985 at 2:00 p.m. In addition to arguing the legal issues relevant to claim 4, the court would like a detailed description of the devices in question, particularly the accused device. Specifications and drawings of defendants’ device sufficient for ruling on infringement are not in the record.

CONCLUSION

In sum, claims 1-4 of the ‘274 patent survived in essentially identical form in the Ford patent, and the Ford patent constitutes a continuation of the ‘274 patent. 35 USC § 252. The defendants have not demonstrated that they are entitled to judgment as a matter of law regarding claims 1-3, but the court withholds judgment regarding claim 4 pending oral argument as to that claim. Defendants’ motion for summary judgment is DENIED IN PART.

      . Claim 1 of the Ford patent reads as follows with the alteration indicated by underlining:

        1. In a metal door assembly:
      A door panel comprising a face sheet,
      A stiffening channel secured to one surface of said sheet on an edge thereof, said channel having a pair of spaced apart flanges extending outwardly from said surface and a connecting web,
      A pivot rod assembly mounted in said channel,
      Said assembly comprising an elongated plastic sleeve extending through corresponding openings in said flanges,

        A collar on said sleeve,

      Sleeve retaining means operatively arranged between said sleeve and said channel to retain said sleeve in said channel,
      A pivot rod having a shank portion positioned in said sleeve and slidable therein and an enlarged head portion,
      A compression spring operatively arranged between said channel and said head portion for urging said head portion away from said channel,
      And releasable latch means operatively arranged between said head portion and said sleeve for releasably retaining said head in a retracted position adjacent said collar.
      Claims 2, 3 and 4 of the Ford patent are identical to claims 2, 3 and 4 of the '274 patent.

      . Defendants argue in their "Rejoinder to the Brief in Opposition to Defendant’s Motion for Summary Judgment” that plaintiff never intended for the “said collar” to be an element of claim 1. Defendants point to a July 13, 1983 letter from Kenneth Klarquist, the attorney who drafted the original patent application, to the inventor, Ralph Ford, wherein he described the claim coverage. “Exhibit MS-8 to Brief in Support of Defendant’s Motion for Summary Judgment." While Attorney Klarquist did not specifically mention the collar in his brief description of the coverage of claim 1, this potential oversight in a letter cannot have precedence over the clear language in claim 1 of the ‘274 patent. “Said collar" is clearly referred to in claim 1 of the ‘274 patent, albeit in an ambiguous manner.

      . It should be recognized that 35 USC § 251 affirmatively prohibited the Patent and Trademark Office in the plaintiff’s reissue application from granting a reissued patent which would have the effect of enlarging the scope of a claim of the original patent. Section 251 states that “[n]o reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.” In light of the fact that the original '274 patent was issued in 1974, this court will not presume that the Patent and Trademark Office has granted an invalid, reissued patent in contravention of 35 USC § 251.


author: DECKER, District Judge.

text:
    Michael T. WOELFFER, et al., Plaintiffs, v. HAPPY STATES OF AMERICA, INC., Defendant.
    No. 85 C 3301.
    United States District Court, N.D. Illinois, E.D.
    Aug. 7, 1985.

      Gary L. Starkman, Scott Hodes, Arvey, Hodes, Costello, Burman, Michael J. Hayes, Asst. Atty. Gen., Chicago, Ill., for plaintiffs.
    John L. Alex, David Lesht, Lockwood, Alex, Fitzgibbon & Cummings, Chicago, Ill., for defendant.
   MEMORANDUM OPINION AND ORDER

DECKER, District Judge.

The Illinois Department of Commerce and Community Affairs (DCCA), its director, Michael T. Woelffer (Woelffer), and a private advertising agency, Zechman & Associates, Advertising, Inc. (Zechman), brought this declaratory judgment action against Happy States of America, Inc. (Happy States), a Virginia corporation. Plaintiffs seek a judicial declaration that 1) the State of Illinois’ use of the slogan, “Illinois, you put me in a happy state,” in its current tourism campaign does not violate the federal or state law rights of defendant and 2) the Eleventh Amendment bars any counterclaim asserted by defendant. Plaintiffs invoke the court’s jurisdiction pursuant to 28 U.S.C. §§ 1331, 1332, 1338, 2201-02 (1982) and the Lanham Act, 15 U.S.C. §§ 1051-1127.

In response, Happy States filed an answer and counterclaim alleging copyright infringement under 17 U.S.C. § 501, false designation of origin or false description pursuant to 15 U.S.C. § 1125(a), and a variety of pendent state law claims. The counterclaim seeks declaratory relief, prospective injunctive relief, and attorney’s fees and costs.

The sole issue before the court is whether defendant’s counterclaim must be dismissed as a matter of law on the basis of sovereign immunity.

I. Discussion

The Eleventh Amendment provides in pertinent part: “The Judicial power of the United States shall not be construed to extend to any suit, in law or equity, commenced or prosecuted against one of the United States by Citizens of another State____” In considering the application of this jurisdictional bar, the court must initially determine “whether a particular suit in fact is a suit against a State.” Pennhurst State School & Hospital v. Halderman, 465 U.S. 89, 104 S.Ct. 900, 908, 79 L.Ed.2d 67 (1984).

In general, a suit brought against a state agency is proscribed by the Eleventh Amendment, regardless of the nature of the relief sought. Id.; Alabama v. Pugh, 438 U.S. 781, 782, 98 S.Ct. 3057, 3058, 57 L.Ed.2d 1114 (1978) (per curiam). Thus, the counterclaim against the DCCA, a state agency, is barred unless the State has waived its immunity.

In addition, the Eleventh Amendment bars a suit against state officials when the State is the real, substantial party in interest. Pennhurst, 104 S.Ct. at 908 (citations omitted). Such a suit is construed to be against the sovereign if “ ‘the judgment sought would expend itself on the public treasury or domain, or interfere with the public administration,’ ” or if the effect of the judgment would be “ ‘to restrain the Government from acting or to compel it to act.’ ” Id. at 908 n. 11 (quoting Dugan v. Rank, 372 U.S. 609, 620, 83 S.Ct. 999, 1006, 10 L.Ed.2d 15 (1963)).

With respect to the counterclaim asserted against Woelffer, the director of the DCCA, there can be little doubt that the State of Illinois is the real, substantial party in interest. Although the counterclaim seeks declaratory and injunctive relief, the judgment sought would restrain the State from acting and interfere with the public administration. Thus, the counterclaim against Woelffer is also barred by the Eleventh Amendment unless the State waived its immunity or otherwise consented to the suit.

For the purposes of exposition, the court will consider whether the state plaintiffs— the DCCA and Woelffer — waived their immunity before addressing the application, if any, of the Eleventh Amendment to Zechman, a private advertising agency.

A. Waiver of Immunity by the State Plaintiffs

1. Consent to Suit

As the Supreme Court recently reaffirmed, a state may waive its immunity and consent to suit in federal court. Atascadero State Hospital v. Scanlon, — U.S. -, 105 S.Ct. 3142, 3145, 87 L.Ed.2d 171 (1985). For example, in Clark v. Barnard, 108 U.S. 436, 2 S.Ct. 878, 27 L.Ed. 780 (1883), the State of Rhode Island voluntarily appeared in a federal interpleader action and prosecuted a claim to the fund in controversy. The Supreme Court held that, by voluntarily submitting to the federal court’s jurisdiction, the State “made itself a party to the litigation to the full extent required for its complete determination.” Id. at 448, 2 S.Ct. at 883.

Despite this broad statement, federal courts have consistently held that a state plaintiff does not waive its sovereign immunity with respect to all plausible counterclaims. To be cognizable, a counterclaim must 1) arise from the same event underlying the state’s action and 2) be asserted “defensively, by way of recoupment, for the purpose of defeating or diminishing the State’s recovery, but not for the purpose of obtaining an affirmative judgment against the State.” Georgia Department of Human Resources v. Bell, 528 F.Supp. 17, 26 (N.D.Ga.1981) (quoting Burgess v. M/V Tamaño, 382 F.Supp. 351, 356 n. 6 (D.Maine 1974)); see Department of Transportation v. American Commercial Lines, Inc., 350 F.Supp. 835, 837-38 (N.D. Ill.1972); cf. In re Greenstreet, Inc., 209 F.2d 660, 664 (7th Cir.1954). Indeed, this court has sustained a counterclaim seeking money damages against a state agency in an amount less than its claim. Department of Transportation, 350 F.Supp. at 838.

By initiating this litigation and invoking the court’s jurisdiction, the DCCA and Woelffer have made a “voluntary submission” to the court’s jurisdiction. Clark, 108 U.S. at 447, 2 S.Ct. at 882. Furthermore, the complaint and counterclaim involve a single underlying occurrence — the use of a slogan in the state’s tourism campaign. If the counterclaim were dismissed in its entirety, the state plaintiffs would be “in the enviable position of ‘heads [we] win, tails you lose.’ ” Department of Transportation, 350 F.Supp. at 837. Thus, the court concludes that the DCCA and Woelffer have at least partly waived their immunity in this case.

The parties sharply dispute, however, the extent of the waiver. The complaint only seeks declaratory relief. It is clear that the court has jurisdiction over the declaratory portion of the counterclaim, which largely mirrors the complaint. The question becomes whether the injunctive relief requested in the counterclaim would constitute an impermissible affirmative judgment against the State.

One federal court has held that a state governmental unit that files a declaratory judgment action does not thereby consent to being sued by a counterclaim. Board of Regents v. Dawes, 370 F.Supp. 1190, 1191 (D.Neb.1974). Because the counterclaim sought monetary damages, the court reasoned that it was not intended for recoupment or set-off. Id.; see also Bell, 528 F.Supp. at 26 (counterclaim for money damages barred by Eleventh Amendment because State’s complaint did not seek monetary damages).

It is true that declaratory and injunctive relief are both considered prospective relief. See, e.g., Toledo, Peona & Western Railroad v. Illinois, 744 F.2d 1296, 1299 n. 1 (7th Cir.1984), cert. denied, — U.S.-, 105 S.Ct. 1751, 84 L.Ed.2d 815 (1985). It is also true that a successful injunctive counterclaim would defeat a declaratory complaint. Nevertheless, like monetary damages, injunctive relief goes much further. In this case, for instance, it would restrain the state plaintiffs from using the slogan that is at the heart of the State of Illinois’ current tourism campaign. Such prospective injunctive relief is more intrusive than money damages. Cf. Atascadero, 105 S.Ct. at 3155 (Brennan, J., dissenting); Pennhurst, 104 S.Ct. at 915, n. 25; Edelman v. Jordan, 415 U.S. 651, 667, 94 S.Ct. 1347, 1357, 39 L.Ed.2d 662 (1974); id. at 680-84, 94 S.Ct. at 1364-66 (Douglas, J., dissenting); see also Jensen v. State Board of Tax Commissioners, 763 F.2d 272, 277 (7th Cir.1985). Moreover, as the Supreme Court has recently stressed, the State’s consent to such an impact on its sovereignty must be unequivocally expressed. Atascadero, 105 S.Ct. at 3147; Pennhurst, 104 S.Ct. at 907.

Thus, in comparison to declaratory relief, the type of injunctive relief requested by Happy States is not sufficiently equivalent to a recoupment or set-off to fall within the narrow exception to sovereign immunity recognized by the courts. Rather, the injunctive relief sought is more like the affirmative relief prohibited in Dawes and Bell. Consequently, although this is a close question, the court concludes that the state plaintiffs did not waive their sovereign immunity with respect to the injunctive portion of the counterclaim by filing their declaratory complaint.

Although the parties have not addressed the issue, the same reasoning applies to defendant’s request for attorney’s fees and costs, which, by definition, are not in the nature of a recoupment or set-off. A recoupment or set-off consists of valid counter causes of action or mutual debts that offset one another. See, e.g., Department of Transportation, 350 F.Supp. at 837; Black’s Law Dictionary 1146, 1230 (rev. 5th ed. 1979). On the other hand, an award of attorney’s fees in this case would be an extraordinary remedy available only to a prevailing party, see 17 U.S.C. § 505, or only if this were an “exceptional” case involving fraud or bad faith. See 15 U.S.C. § 1117. Thus, even though the state plaintiffs have pleaded a like request in their complaint, an award of attorney’s fees or costs in favor of defendant would constitute an impermissible affirmative judgment under the circumstances of this case.

2. Congressional Abrogation of Immunity

Defendant next maintains that Congress abrogated the sovereign immunity of the state plaintiffs by enacting the Copyright Act of 1976, 17 U.S.C. §§ 101-810, and the Lanham Act, 15 U.S.C. §§ 1051-1127.

In Atascadero State Hospital v. Scanlon, — U.S. -, 105 S.Ct. 3142, 87 L.Ed.2d 171 (1985), the Supreme Court recently held that a suit against two state agencies under § 504 of the Rehabilitation Act of 1973, 29 U.S.C. § 794, was proscribed by the Eleventh Amendment. According to the Court, the fundamental nature of the interests implicated by the Eleventh Amendment dictates the conclusion that “Congress may abrogate the States’ constitutionally secured immunity from suit in federal court only by making its intention unmistakably clear in the language of the statute.” Id., 105 S.Ct. at 3147.

Applying this principle to the Rehabilitation Act, the Supreme Court noted that the statute “provides remedies for violations of § 504 by ‘any recipient of Federal assistance.’ ” Id. at 3149 (quoting 29 U.S.C. § 794(a)) (original emphasis). The Court acknowledged that the State of California is a recipient of federal aid — and thus literally within the class of defendants — under the statute. Nevertheless, this fact was not enough, because:

given their constitutional role, the States are not like any other class of recipients of federal aid. A general authorization for suit in federal court is not the kind of unequivocal statutory language sufficient to abrogate the Eleventh Amendment. When Congress chooses to subject the States to federal jurisdiction, it must do so specifically.

Id. at 3149 (citations omitted).

The watershed principle enunciated in Atascadero governs this case. Section 501(a) of the Copyright Act of 1976 authorizes a copyright owner to institute an infringement action against “anyone who violates any of [his] exclusive rights.” 17 U.S.C. § 501(a), (b). Similarly, the Lanham Act creates a cause of action against “[a]ny person” who falsely represents or falsely designates the origin of goods or services in interstate commerce. 15 U.S.C. § 1125(a). The sweeping language employed by Congress arguably includes states within the class of copyright and trademark infringers. Cf. Mills Music, 591 F.2d at 1285. Under Atascadero, however, this is not enough to abrogate sovereign immunity.

The general authorization for suit in federal court against “anyone” who infringes a copyright or “any person” who falsely designates the origin of goods is not the kind of unequivocal statutory language sufficient to abrogate the Eleventh Amendment. Atascadero, 105 S.Ct. at 3149. Therefore, because Congress did not express its intention to abrogate the Eleventh Amendment in unmistakable language in the statutes themselves, the court holds that the Copyright Act of 1976 and the Lanham Act do not abrogate the Eleventh Amendment bar to suits against the States.

Again relying on Mills Music, defendant also argues, however, that the Eleventh Amendment is subordinate to the Copyright and Patent Clause of the Constitution, U.S. Const., art. I, § 8, cl. 8. Accordingly, defendant contends, any enactment by Congress that protects constitutionally recognized copyrights, including the Copyright Act, inherently abrogates sovereign immunity. Mills Music, 591 F.2d at 1285-86. Atascadero disposes of this reasoning as well.

Although the Rehabilitation Act was enacted pursuant to § 5 of the Fourteenth Amendment, the Supreme Court observed that “were we to view this statute as an enactment pursuant to the Spending Clause, Art. I, § 8, ... we would hold that there was no indication that the State of California consented to federal jurisdiction.” Atascadero, 105 S.Ct. at 3150. Similarly, there is no indication on the record that the State of Illinois, by developing and using an advertising slogan pursuant to a tourism promotion campaign authorized by statute, consented to federal jurisdiction.

Thus, the court concludes that the DCCA and Woelffer did not waive, nor did Congress abrogate, their sovereign immunity with respect to defendant’s counterclaim for injunctive relief and attorney’s fees. Consequently, the Eleventh Amendment bars those portions of the counterclaim against the DCCA. This conclusion, however, does not end the inquiry with respect to Woelffer.

B. Ex parte Young and Woelffer

Notwithstanding the impact that a suit may have on a state, the Supreme Court has long recognized an important, albeit shrinking, exception to the sovereign immunity of a state officer — a suit challenging the constitutionality of a state official’s action is not one against the State under Ex parte Young, 209 U.S. 123, 28 S.Ct. 441, 52 L.Ed. 714 (1908). See Pennhurst, 104 S.Ct. at 909; see also Jensen, 763 F.2d at 277. The Young exception, ignored by plaintiffs, “has been accepted as necessary to permit the federal courts to vindicate federal rights and hold state officials responsible to ‘the supreme authority of the United States.’ ” Pennhurst, 104 S.Ct. at 910 (quoting Young, 209 U.S. at 160, 28 S.Ct. at 454).

Young held that the Eleventh Amendment did not bar a federal action seeking to enjoin the Attorney General of Minnesota from enforcing a statute allegedly violative of the Fourteenth Amendment. 209 U.S. at 159-60, 28 S.Ct. at 453-54. Ironically, although it has recently restricted this exception, the Supreme Court, including both the majority and principal minority opinions in Pennhurst, has repeatedly made clear that the Young exception extends to federal suits seeking prospective injunctive relief against state officers who have allegedly violated federal statutes as well. See, e.g., Atascadero, 105 S.Ct. at 3154 (Brennan, J., dissenting); Pennhurst, 104 S.Ct. at 909; id. at 932, 932 n. 27 (Stevens, J., dissenting); Cory v. White, 457 U.S. 85, 90-91, 102 S.Ct. 2325, 2328-29, 72 L.Ed.2d 694 (1982); Edelman v. Jordan, 415 U.S. at 664, 94 S.Ct. at 1356; Worcester County Trust Co. v. Riley, 302 U.S. 292, 297, 58 S.Ct. 185, 187, 82 L.Ed. 268 (1937). In particular, Edelman v. Jordan held that when a plaintiff sues a state official alleging a violation of federal law, the federal court may award an injunction that governs the official’s future conduct, but not one that awards retroactive monetary relief. 415 U.S. at 677, 94 S.Ct. at 1362. The need to promote the vindication of federal rights supports this distinction. Pennhurst, 104 S.Ct. at 910.

Because the injunctive relief requested by defendant against Woelffer rests squarely within the prospective injunctive relief authorized by Edelman and Young, it is not barred by the Eleventh Amendment.

Next, the court must determine whether the attorney's fees and costs sought against Woelffer in connection with the prosecution of the counterclaim are merely “ancillary” to the federal court’s power to impose injunctive relief under Edelman. See 415 U.S. at 668, 94 S.Ct. at 1358. Although defendant cites no cases in favor of an award of fees against Woelffer, the Supreme Court has expressly reserved the question “whether a federal court could award attorney’s fees against a State based [solely] on a statutory, non-eivilrights claim.” Maher v. Gagne, 448 U.S. 122, 130, 100 S.Ct. 2570, 2575, 65 L.Ed.2d 653 (1980). Support exists for the conclusion that an award of fees in this case would fall under the ancillary effects doctrine. See, e.g., Hutto v. Finney, 437 U.S. 678, 692, 696-98, 98 S.Ct. 2565, 2574, 2576-77, 57 L.Ed.2d 522 (1978); but cf. id. at 698 n. 31, 98 S.Ct. at 2577 n. 31 (distinguishing statutes rooted in Congress’ article I power). Nevertheless, in light of the recent restrictive interpretation of the exceptions to sovereign immunity advanced by the Supreme Court and the absence of statutory authorization or Congressional intent analogous to that evident in 42 U.S.C. § 1988 or the Equal Access to Justice Act, Pub.L. No. 96-481, 94 Stat. 2325 (1980), cf. Hutto, 437 U.S. at 698 n. 31, 98 S.Ct. at 2577 n. 31; Berman v. Schweiker, 713 F.2d 1290, 1301 (7th Cir.1983), the court concludes that an award of attorney’s fees would not be merely ancillary to the court’s power but an expense on the state’s treasury prohibited by the Eleventh Amendment.

C. Derivative Sovereign Immunity and Zechman

Finally, plaintiffs argue that Zechman is a state agent entitled to sovereign immunity. Even though state officials may review Zechman’s work for the DCCA, it is clear that the counterclaim against Zechman in fact is not against the State. See Pennhurst, 104 S.Ct. at 908.

First, Zechman is an independent, private advertising firm performing solely proprietary activities as opposed to an essential governmental function. See Idaho Potato Commission v. Washington Potato Commission, 410 F.Supp. 171, 176-77 (D.Idaho 1975). Consequently, Zechman is not an alter ego of the State. Moreover, the declaratory and injunctive relief requested by defendant against Zechman would have no impact on the public fisc. In light of its juridical independence, any prospective injunctive relief granted against Zechman would a fortiori restrain it, and not the State, from acting.

Therefore, the court concludes that Zechman may not enjoy derivative sovereign immunity under the circumstances of this case. See Hercules, Inc. v. Minnesota State Highway Department, 337 F.Supp. 795, 801 (D.Minn.1972). A contrary conclusion would immunize any independent contractor working for the State. Such a result would be unprecedented, unprincipled, and unsound.

III. Conclusion

For the foregoing reasons, the court holds that the Eleventh Amendment bars those portions of defendant’s counterclaim seeking injunctive relief against the DCCA and attorney’s fees and costs against the DCCA and Woelffer. The court has subject matter jurisdiction over the remaining claims presented in this litigation.

      . Zechman is an independent firm under contract with the DCCA to provide advertising services for the State. Its work product is subject to the review of DCCA officials.

      . The counterclaim does not seek money damages.

      . That Happy States also raises federal and common law copyright infringement claims does not change this result, since these claims arise out of the identical transaction underlying plaintiffs' complaint.

      . This particular issue is a rara avis indeed. Cf. 3 J. Moore, Moore’s Federal Practice ¶ 13.19 [2.-2], at 13-135 n. 9 (1985). Not surprisingly, the court has not found, and the parties have not cited, any case on all fours with this one.

      . Defendant relies primarily on Mills Music, Inc. v. Arizona, 591 F.2d 1278, 1285 (9th Cir.1979), which held that the sweeping language used by Congress in enacting the Copyright Act of 1909 pursuant to the Copyright and Patent Clause, U.S. Const., art. I, § 8, cl. 8, sufficiently indicates an intent to abrogate a state’s Eleventh Amendment immunity. See also Lemelson v. Ampex Corp., 372 F.Supp. 708, 710-12 (N.D.Ill. 1974) (holding state governments liable under federal patent laws); but cf. Mihalek Corp. v. Michigan, 595 F.Supp. 903, 905 (E.D.Mich.1984) (rejecting Mills Music), appeal docketed, No. 85-1593 (6th Cir. July 23, 1985). In light of the recent Atascadero decision, see infra 503-505, however, the cases cited by defendant are of questionable vitality.

      . In light of this opinion, the court need not address plaintiffs’ additional contention that common principles of statutory construction, including the ejusdem generis rule, exempt States from liability under the Lanham Act. Compare 15 U.S.C. § 1125(a) with § 1054 (express inclusion of States in registration provision) and § 1127 (definition of "person").

      . Because the Lanham Act was enacted under the Commerce Clause, this argument is inapposite to defendant’s false description claim, cf. Phi Delta Theta Fraternity v. J.A. Buchroeder & Co., 251 F.Supp. 968, 976 (W.D.Mo.1966).

      . In a passing reference, the Supreme Court recently assumed, without deciding, that the reasoning of Mills Music is correct. Oneida County v. Oneida Indian Nation, — U.S.-, 105 S.Ct. 1245, 1261, 84 L.Ed.2d 169 (1985). It is safe to surmise, however, that this inconsequential dictum is completely superceded by the subsequent comprehensive analysis is Atascadero.

      . The Supreme Court has held that “Congress may, in determining what is ‘appropriate legislation' for the purpose of enforcing the provisions of the Fourteenth Amendment, provide for private suits against States or state officials which are constitutionally impermissible in other contexts.” Fitzpatrick v. Bitzer, 427 U.S. 445, 456, 96 S.Ct. 2666, 2671, 49 L.Ed.2d 614 (1976). Congress did not enact the Copyright Act pursuant to its flexible Fourteenth Amendment powers. This fact obviously cuts against defendant’s argument of Congressional abrogation of the Eleventh Amendment.

      . Examination of the relevant statutory provisions for attorney’s fees fails to evince an intention of Congress to waive the sovereign immunity of the States. See 17 U.S.C. § 505; 15 U.S.C. § 1117; and accompanying legislative history.

      . The cases cited by plaintiffs are factually distinguishable. See Matranga v. Travelers Insurance Co., 563 F.2d 677 (5th Cir.1977) (involving Medicare fiscal intermediaries); St. Joseph Hospital v. Electronic Data Systems, 573 F.Supp. 443 (S.D.Tex.1983) (involving Medicaid fiscal intermediaries); see abo Vanderberg v. Carter, 523 F.Supp. 279 (N.D.Ga.1981), aff'd, 691 F.2d 510 (11th Cir.1982).


author: SHADUR, District Judge.

text:
    August ARADO, Plaintiff, v. GENERAL FIRE EXTINGUISHER CORPORATION, Defendant.
    No. 84 C 4749.
    United States District Court, N.D.Illinois, E.D.
    Aug. 7, 1985.

      H. Candace Gorman and Lowell B. Komie, Chicago, Ill., for plaintiff.
    Seymour Cohen, Mark L. Juster, Gary Wincek and Fredric Bryan Lesser, Chicago, Ill., for defendant.
   MEMORANDUM OPINION AND ORDER

SHADUR, District Judge.

August Arado (“Arado”) charges General Fire Extinguisher Corporation (“General”) terminated him in violation of the Age Discrimination in Employment Act of 1967 (“ADEA”), 29 U.S.C. §§ 621-634. In addition to that Count I cause of action (captioned “Age Discrimination Claim”), Ara-do’s Complaint asserts two unlabeled claims (Counts II and III), each of which realleges (via incorporation by reference) all of Count I’s 17 paragraphs of allegations. General now moves under Fed.R. Civ.P. (“Rule”) 56 for “partial” summary judgment as to Complaint Counts II and III and portions of the prayer for relief in Count I. For the reasons stated in this memorandum opinion and order, the motion is granted in part and denied in part.

Facts

Resolution of the current motion requires only a brief treatment of the facts. Arado was General’s Treasurer. At the time of his termination in October 1983, he was 54 years old and had worked at General for 12V2 years.

Complaint Count I IT 9 alleges General’s President Harry Haulman (“Haulman”) had announced in the summer of 1983 he was planning a “youth movement” at General because he was dissatisfied with the performance of older employees. Haul-man’s strategy was to harass older workers into resigning by either demoting them or adding significantly to their workloads (id. ¶ 3). Arado asserts he was given the work of two other employees in addition to his own normal full-time duties (Arado Deposition (“Dep.”) 48-50, 70).

Arado met twice with Haulman in mid-August 1983 to explain the new duties were impossibly burdensome and plead for assistance in carrying them out (Dep. 49-57). Each time Haulman refused to lighten Arado’s load (Dep. 50, 56). At the first meeting Haulman told Arado to “quit, quit, quit, quit” if he could not perform all the functions (Dep. 50), and at the second meeting Haulman threatened Arado with termination if Arado did not take on the new duties within a week (Dep. 57).

In mid-September the dispute between Arado and Haulman intensified when Ara-do took a vacation without making arrangements for anyone to cover his duties (Dep. 75-76). Finally, on October 4 Haulman told Arado “this couldn’t go on any longer” and terminated him, giving Arado his remaining vacation pay and four weeks’ severance pay (Dep. 80). Haulman also asked Arado whether Arado wanted a letter of recommendation (id.). Arado responded affirmatively and Haulman returned 15-20 minutes later with the letter (Dep. 80-81), which read:

To Whom It May Concern:
August Arado has worked with me for the past twelve years. During that time, he has been Treasurer of the company for the past five years. Unfortunately, through cutbacks caused by present economic conditions, we have had to eliminate his position.
I would particularly recommend Arado in the Cost field, Inventory Control, and Lifo accounting. I doubt if you will find anyone to match his expertise in these fields.

Arado’s Claims

Complaint Count I charges Arado was fired because of his age, in violation of ADEA. It prays for actual, compensatory, consequential and liquidated damages as well as attorneys’ fees. Count II charges General’s award of only four weeks’ severance pay to Arado was an “intentional and willful” violation of General’s “standard practice” of awarding at least one week’s pay for each year of employment. Count III charges Haulman’s letter of recommendation is actually more harmful than helpful to Arado, so that Arado has not been able to use it and has suffered a “loss of his business reputation.”

General’s Motion

General seeks summary judgment as to Counts II and III. It also asks for what it terms a “partial” summary judgment as to Count I’s prayers for compensatory, consequential and liquidated damages.

1. Count I

General’s motion as to Count I simply misapprehends the purpose and functions of Rule 56. As this Court has often repeated (most recently in Newman-Green, Inc. v. Alfonzo-Larrain, 612 F.Supp. 1434, 1439 (N.D.Ill.1985)), Rules 56(a) and 56(b) simply do not permit the piecemealing of a single claim or the type of issue-narrowing sought here by General. This Court’s colleague Judge Susan Getzendanner has just concurred in that analysis in Capitol Records, Inc. v. Progress Record Distributing, Inc., 106 F.R.D. 25 (N.D.Ill. 1985), explaining that despite Rule 56(a)’s reference to “all or any part” of a claim, the Rule authorizes only the granting of appealable “judgments” disposing of entire claims.

As Capitol Records and this Court’s consistent opinions teach, Rule 56(d)’s issue-narrowing provision operates only in the wake of an unsuccessful (and proper) motion under Rule 56(a) or 56(b). Capitol Records, 106 F.R.D. at 29; SFM Corp. v. Sundstrand Corp., 102 F.R.D. 555, 558-59 (N.D.Ill.1984). Rule 56(d)’s purpose is merely “to salvage whatever constructive results have come from the judicial effort” to resolve a full-fledged summary judgment motion. 6 Pt. 2 Moore, Moore’s Federal Practice ¶ 56.20[3.-3], at 56-1223. There is no such thing as an independent motion under Rule 56(d).

Accordingly General’s Count I motion is denied. That denial is (of course) without prejudice.

2. Count II

Count II’s common law claim for severance pay fails under this Court’s analysis of Illinois law in Rynar v. Ciba-Geigy Corp., 560 F.Supp. 619 (N.D.Ill.1983). Rynar, id. at 624 explained an Illinois employer is not obligated to award severance pay unless that obligation arises from the employment contract. Even a written personnel policy setting forth guidelines for severance pay is not binding on the employer unless (id.):

1. a separate document constituting an express employment contract can be construed as subject to the “policies” of the employer; or
2. “the terms of the policy itself suggest that a mutuality of obligation was . intended by employer and employees when the policy was given.”

No written employment contract existed between Arado and General, and Arado does not claim an express oral contract (Rynar, 560 F.Supp. at 624) embodying a severance pay obligation. Those uncontested facts obviously preclude the first of the At/war-identified possibilities.

Nor has Arado provided any basis for finding General otherwise adopted a personnel policy that entailed a mutuality of obligation. In fact, Arado has not even asserted a mutually binding policy exists. Instead Complaint Count II ¶ 18 alleges (but without the necessary Rule 56(e) evidentiary support) General had a “standard practice” of awarding severance pay ranging between one week’s and one month’s pay for each year of employment.

But Rynar, 560 F.Supp. at 625 and Carter v. Kaskaskia Community Action Agency, 24 Ill.App.3d 1056, 332 N.E.2d 574, 576 (5th Dist.1974), on which Rynar relied, make it clear a personnel policy does not take on contractual status unless at a minimum it:

1. is communicated to the employees;
2. is accepted by the employees; and
3. places obligations on both the employer and the employees.

It is profitable to compare (or contrast) the Rynar and Carter treatment of those factors with Arado’s claimed situation.

As to the first element, in each of Rynar and Carter the policy was communicated to the employees in writing. As for the second factor, the cases reached opposite results:

1. In Carter the policy was deemed accepted by the employees because (a) the employer reviewed it with them at the time it was implemented (24 Ill. App.3d at 1058-59, 322 N.E.2d at 576) and (b) the employees continued to work after getting that explanation.
2. In Rynar the plaintiff employee was found not to have accepted the policy as a contract because he had not been informed of or reviewed its terms until several months after he began working. Moreover, modifications in the policy were never presented to employees for their review or approval (560 F.Supp. at 625).

Finally, both cases found the mutuality-of-obligation requirement satisfied by an employee undertaking that provided consideration for the employer’s severance pay obligation in the written personnel policy. In each instance the employee was obligated to provide adequate notice to the employer before resigning. Rynar, 560 F.Supp. at 625; Carter, 24 Ill.App.3d at 1059, 322 N.E.2d at 576.

By contrast, Arado meets none of the three criteria. He has neither asserted nor offered evidence tending to show communication or acceptance or mutuality of obligation as to General’s asserted severance pay policy.

As a threshold matter, the very existence of a “policy” poses a real problem. Haul-man testified severance pay was a purely discretionary matter left to his sense of what was “fair” (Haulman Dep. 59-60). Arado bases his counter-assertion of a “policy” entirely on inferences from amounts actually paid to terminated employees. But even aided by the required favorable inferences, Arado has not defined the “policy” with enough precision to render that term appropriate. Indeed Arado Mem. 9 puts it in terms of severance pay varying “between one month’s pay and one week’s pay for each year an employee was employed with [General]."

Even if this Court assumes arguendo that formulation could be termed a “policy,” the record is utterly bereft of any hint that policy was ever communicated to or reviewed with the employees. And finally there is no whisper of any evidence as to any obligation shouldered by the employees in return for General’s asserted promise of severance pay. Under Illinois law the lack of such an obligation renders the policy a gratuity with no binding effect on the employer. Sargent v. Illinois Institute of Technology, 78 Ill.App.3d 117, 121-22, 33 IlLDec. 937, 397 N.E.2d 443, 446 (1st Dist.1979). In short, Arado has failed utterly to raise a factual issue as to the existence of any enforceable severance pay claim.

3. Count III

Count III is simply not cognizable under Illinois law. Illinois does recognize a tort of injury to business reputation where oral or written statements call into question one’s qualifications or competence to perform his or her work. 33A I.L.P. Slander & Libel § 27. But that cause of action is a form of defamation and thus requires publication of the injurious statements. Libert v. Turzynski, 129 Ill.App.2d 146, 150, 262 N.E.2d 741, 743 (1st Dist.1970). Arado Complaint Count III ¶ 18 admits he never used Haulman’s letter, so there has been no publication.

Even apart from that fatal defect, it is quite difficult to interpret the unambiguously favorable language of the letter as being in any way defamatory. Thus Count III cannot survive summary judgment viewed as a defamation claim. And if it purports instead to allege a different kind of tort, no such cause of action exists under Illinois law.

It may be Arado rather intended to state a contract-type claim in Count III. Any such claim would have to be founded on General’s obligations:

1. to provide Arado with a letter of recommendation; and
2. to write the letter in a highly complimentary (and not just a favorable) fashion.

Arado would fare no better in the realm of contract than in the realm of tort. He provides no shred of legal or factual support for the existence of such obligations.

However Count III is viewed, it is insufficient in law. Here too General is entitled to summary judgment.

Conclusion

There is no genuine issue of material fact (or indeed law) as to Counts II and III. General is entitled to a judgment as a matter of law as to those Counts. Accordingly Counts II and III are dismissed with prejudice. General’s motion as to Count I is denied without prejudice.

      . Rule 56 imposes on the party moving for summary judgment the burden of establishing the lack of a genuine issue of material fact. Korf v. Ball State University, 726 F.2d 1222, 1226 (7th Cir.1984). For that purpose the court must, in viewing the evidence, draw all reasonable inferenees in the light most favorable to the nonmovant — here Arado. Hermes v. Hein, 742 F.2d 350, 353 (7th Cir.1984). Throughout this opinion the recitals of facts adhere to those principles.

      . Arado's Deposition 95-97 reflects Arado learned of Haulman’s alleged statement third-hand. Such hearsay is of course not admissible evidence as required by Rule 56(e), and under that Rule Arado may not simply rest on his pleadings. But for purposes of the present motion General has not challenged the merits of Count I’s age discrimination claim. Thus, the allegations as to discrimination in the preceding and following sentences in the text serve here only to place the contested issues in context.

      . General also failed to comply with this District Court’s General Rule 12(e), which mandates that every summary judgment submission be accompanied by “a statement of the material facts as to which the moving party contends there is no genuine issue and that entitle the moving party to judgment as a matter of law," including all supporting references to evidentiary materials. Arado in turn (perhaps more understandably) did not file the responsive statement required by General Rule 12(f). Had the issues been more complex than this opinion reflects, this Court would have rejected General’s motion out of hand because of its noncompliance.

      . In this case the applicable provision is Rule 56(b):
      A party against whom a claim ... is asserted ... may ... move with or without supporting affidavits for a summary judgment in his favor upon all or any part thereof.
      Precisely the same analysis applies to the identical "all or any part” language in the two provisions, one of which (Rule 56(a)) deals with a plaintiffs motion and the other of which (Rule 56(b)) deals with a defendant's motion.

      . Though Arado’s counsel did not caption Counts II and III (unlike Count I), each of the later counts reasserts all 17 paragraphs of Count I — all of which address ADEA issues. Hence General initially (and justifiably) assumed Counts II and III were intended as additional ADEA claims. Arado’s current memorandum has explained both are pendent common law counts.

      . Arado’s wholly inadequate discussion of law on this issue cites only Kulins v. Maleo, Inc., 121 Ill.App.3d 520, 76 Ill.Dec. 903, 459 N.E.2d 1038 (1st Dist.1984). Kulins simply did not address the issues relevant here, which were not in controversy there and hence not discussed by the court; id. at 524, 76 Ill.Dec. 903, 459 N.E.2d at 1042.

      . It must be remembered Arado does not now seek summary judgment — an impossible prospect given the unascertainability of the amount due him under his version. Instead he resists an adverse judgment by contending some amount remains owing. For that purpose it could perhaps be sufficient for him to create a reasonable inference to that effect from the fact that every other terminated employee received (say) at least one week's pay for every year of employment — indeed that inference might survive as evidence of a policy that tempered Haul-man’s otherwise discretionary judgment of what was "fair.” But Arado appears undaunted by the failure of the facts to fit such a "policy”:
      1. One other employee with nearly Arado’s tenure (11 years as compared with Arado's 121/2 years) received just 4 weeks’ severance pay, as did Arado.
      2. Two employees were given no severance pay at all.
      Given the conclusion reached in this opinion, it becomes unnecessary to trace Arado's somewhat impenetrable efforts (Mem. 8-9, 11-12) to mold the disparate facts into a definable "policy"

      . Arado’s inability to articulate the claimed policy even now — with the benefit of hindsight as to what severance payments were actually made— buttresses the absence of any communication about it while he was still employed.

      . This assumption gives Arado's lawyers more than their due. After all, it is one thing, under a notice-pleading regime, not to require a complaint to identify a theory of recovery. But the least to be expected of plaintiffs counsel in opposition to a defendant’s summary judgment motion is a statement of plaintiffs predicate for his claim. All Arado Mem. 13 speaks of is "loss of business reputation" — a concept grounded strictly in tort.

      . Haulman’s letter (quoted earlier) is claimed by Arado to damn him with faint praise by singling out for special commendation certain areas of experience and expertise, which Arado says will not help him get the kind of job he is looking for. Perhaps understandably, no case law authority is tendered to support such a claim.

      . General’s Mem. 18-19 sought an award of attorneys’ fees for bringing the current motion. As this opinion reflects, General had its own problems with fundamental Rule 56 principles. Because this Court lacks power to tax both sets of lawyers with fees (say in favor of this District Court’s fund to reimburse pro bono counsel for expenses they advance), no fees will be awarded either way.