Levin v. Septodont, Inc. , 34 F. App'x 65 ( 2002 )


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  •                           UNPUBLISHED
    UNITED STATES COURT OF APPEALS
    FOR THE FOURTH CIRCUIT
    JULES J. LEVIN; ROGER P. LEVIN;          
    STACEY W. LEVIN,
    Plaintiffs-Appellants,
    v.                             No. 00-2234
    SEPTODONT, INCORPORATED,
    Defendant-Appellee.
    
    JULES J. LEVIN; ROGER P. LEVIN;          
    STACEY W. LEVIN,
    Plaintiffs-Appellants,
    v.                             No. 00-2462
    SEPTODONT, INCORPORATED,
    Defendant-Appellee.
    
    JULES J. LEVIN; ROGER P. LEVIN;          
    STACEY W. LEVIN,
    Plaintiffs-Appellees,
    v.                             No. 01-1852
    SEPTODONT, INCORPORATED,
    Defendant-Appellant.
    
    Appeals from the United States District Court
    for the District of Maryland, at Baltimore.
    William M. Nickerson, District Judge.
    (CA-99-647)
    Argued: October 31, 2001
    Decided: April 22, 2002
    2                      LEVIN v. SEPTODONT, INC.
    Before MICHAEL, MOTZ, and KING, Circuit Judges.
    Affirmed in part, vacated in part, and remanded by unpublished opin-
    ion. Judge Michael wrote the opinion, in which Judge King joined.
    Judge Motz wrote an opinion concurring in part and concurring in the
    judgment.
    COUNSEL
    ARGUED: Howard Gary Goldberg, GOLDBERG, PIKE & BES-
    CHE, P.C., Baltimore, Maryland, for Appellants. Barbara Susan
    Wahl, Melissa Callahan Lesmes, ARENT, FOX, KINTER, PLOTKIN
    & KAHN, P.L.L.C., Washington, D.C., for Appellee. ON BRIEF:
    Michael A. Simpson, GOLDBERG, PIKE & BESCHE, P.C., Balti-
    more, Maryland, for Appellants. Courtney A. Sullivan, ARENT,
    FOX, KINTER, PLOTKIN & KAHN, P.L.L.C., Washington, D.C.,
    for Appellee.
    Unpublished opinions are not binding precedent in this circuit. See
    Local Rule 36(c).
    OPINION
    MICHAEL, Circuit Judge:
    On March 18, 1998, plaintiffs-appellants, Jules J. Levin, Roger P.
    Levin, and Stacey W. Levin (the Levins), agreed to sell to defendant-
    appellee, Septodont, Inc. (Septodont), a patent for a low irritation
    anesthetic and antiseptic mouth rinse (the mouth rinse), 
    U.S. Patent No. 5,547,657
     (the ’657 patent). Septodont terminated its agreement
    with the Levins on the ground that the mouth rinse had failed to sat-
    isfy a contractual requirement that the rinse remain stable over a shelf
    life of one year. The Levins then sued Septodont for breach of con-
    LEVIN v. SEPTODONT, INC.                         3
    tract and indemnification in the United States District Court for the
    District of Maryland. The district court granted summary judgment to
    Septodont on both claims. In dealing with the breach of contract
    claim, the district court held that the ’657 patent was invalid because
    it failed to name Dr. Donald Kilday as an inventor of the mouth rinse;
    the court therefore concluded that the agreement between the Levins
    and Septodont was unenforceable for lack of consideration. Because
    we conclude that Dr. Kilday’s contributions to the development of the
    mouth rinse do not make him a joint inventor, we vacate the district
    court’s grant of summary judgment to Septodont on the breach of
    contract claim and remand for further proceedings on that claim. We
    affirm the district court’s grant of summary judgment to Septodont on
    the Levins’ claim for indemnification.
    I.
    Dr. Jules J. Levin, a retired dentist, first thought of the idea for the
    mouth rinse while attending a dental trade show in 1992. There, he
    learned of a product called Ulcerease, a numbing cream that is used
    to reduce the pain caused by mouth ulcers. Levin thought there might
    be a market for a mouth rinse that could be used to reduce the pain
    caused by routine dental procedures. He soon sought help with his
    idea from Dr. Donald Kilday, the developer of Ulcerease. Dr. Levin
    told Dr. Kilday that he wished to develop a mouth rinse that, if
    swished around the mouth of a dental patient, would numb the soft
    tissues of the mouth for 15 to 20 minutes. After consulting with Dr.
    Levin, Dr. Kilday considered possible formulations for the product
    and ultimately settled on using phenol (a key ingredient in Ulcerease)
    as an antiseptic and benzocaine as an anesthetic. Early formulations
    of the product used alcohol as a solvent, but this proved unsatisfactory
    because it produced a burning sensation in patients’ mouths. Dr. Kil-
    day recognized that this problem could be solved by suspending the
    benzocaine and phenol in a non-alcoholic solvent. He initially
    engaged Harmony Labs to develop a non-alcoholic solvent, but Har-
    mony was unable to find a solution. Dr. Kilday then sought help from
    Eastman Chemical Company (Eastman). After several months of
    research, scientists at Eastman discovered that they could suspend
    phenol and benzocaine in a solution of polyethylene glycol and pro-
    pylene glycol, thereby producing a mouth rinse that did not cause a
    burning sensation.
    4                      LEVIN v. SEPTODONT, INC.
    The Eastman scientists believed that the new, non-alcoholic mouth
    rinse was patentable. The Levins and Eastman agreed that Eastman
    would handle the patent application process for the mouth rinse and
    that the assignee (the record owner) of the patent would be Eastman.
    The Levins (through their company, J. Coleman, Inc.) received an
    exclusive license to use the patent with an option to have the patent
    assigned to it free of charge at any time. This arrangement had two
    important advantages for the Levins. First, Eastman bore the expense
    of preparing the patent application. Second, having the patent issued
    to Eastman rather than to Dr. Kilday or Dr. Levin would better deter
    potential infringers of the mouth rinse patent.
    The Patent Office initially rejected Eastman’s patent application on
    the ground that the mouth rinse was obvious in light of the prior art.
    See 
    35 U.S.C. § 103
    . Eastman then amended its application to limit
    the scope of its claims and to emphasize that the mouth rinse’s use
    of a non-alcoholic, non-irritating solvent was a non-obvious contribu-
    tion to the field. On August 20, 1996, the Patent Office allowed East-
    man’s patent application and issued 
    U.S. Patent No. 5,547,657
     for a
    low-irritation anesthetic and antiseptic mouth rinse. Five Eastman sci-
    entists were listed as the inventors of the mouth rinse, and Eastman
    was listed as the patent’s assignee.
    With the ’657 patent in hand, the Levins set out to find a company
    to manufacture and market their mouth rinse. After unsuccessful dis-
    cussions with a number of potential business partners, the Levins
    found a willing partner in Septodont, a dental marketing company and
    a distributor of dental products. Under the terms of their March 18,
    1998 agreement, the Levins agreed to assign the ’657 patent to Septo-
    dont and to give Septodont the exclusive right to manufacture and sell
    the mouth rinse. In return Septodont agreed to pay the Levins $50,000
    upon the signing of the agreement, $500,000 at least 10 days prior to
    the launch date for the mouth rinse, additional guaranteed payments
    of varying amounts until the end of the patent term, and variable pay-
    ments based on a percentage of Septodont’s net sales for the mouth
    rinse. The contract also obligated the Levins to pay for a stability test
    on the mouth rinse, and it gave Septodont the right to terminate the
    agreement and to receive a refund of all payments made to the Levins
    if the results of the stability test indicated that the shelf life of the
    product would be less than one year. The contract also included a
    LEVIN v. SEPTODONT, INC.                       5
    general indemnity provision, which stated that Septodont would "in-
    demnify and hold harmless [the Levins] against any and all lapses,
    fees, cost, claims, expenses and/or litigation, including reasonable
    attorneys’ fees and expenses, incurred as a result of any alleged or
    actual use or misuse of the [mouth rinse] or as a result of the transac-
    tions contemplated by this Agreement."
    Septodont began experimenting with various coloring and flavor-
    ing agents in order to ready the mouth rinse for launch, but it claims
    that the mouth rinse changed color after a few months. Septodont then
    terminated its contract with the Levins on the ground that the product
    had failed to meet the contract’s stability requirement. The Levins
    sued for breach of contract in the United States District Court for the
    District of Maryland, invoking that court’s diversity jurisdiction under
    
    28 U.S.C. § 1332
    (a)(1). The Levins also claimed indemnification for
    the expenses of the lawsuit on the ground that their contract with Sep-
    todont obligated Septodont to reimburse them for all litigation
    expenses incurred "as the result of the transactions contemplated by
    this Agreement." Septodont filed various counterclaims, including a
    claim for a declaratory judgment that the ’657 patent was invalid
    because it failed to list Dr. Levin and Dr. Kilday as inventors of the
    mouth rinse. Septodont also argued the invalidity of the ’657 patent
    as an affirmative defense to the Levins’ breach of contract claim, con-
    tending that the contract was unenforceable for lack of consideration
    because the Levins had failed to convey valid patent rights.
    After discovery Septodont moved for summary judgment on the
    Levins’ breach of contract and indemnification claims. The district
    court granted the motion on both counts. The court first held that even
    though Dr. Kilday had not been able to solve the critical problem of
    finding a non-alcoholic, non-irritating solvent, he was nevertheless a
    joint inventor of the mouth rinse because he had proposed the rinse’s
    two active ingredients, benzocaine and phenol. The court did not
    reach the question whether Dr. Levin should also have been listed as
    an inventor. The court then ruled that the patent could not be cor-
    rected to list Dr. Kilday as an inventor under 
    35 U.S.C. § 256
    , which
    allows for correction of the listed inventors on a patent so long as the
    error arose without "deceptive intent" on the part of the omitted
    inventor(s). The district court determined that Septodont had demon-
    strated the presence of deceptive intent by clear and convincing evi-
    6                      LEVIN v. SEPTODONT, INC.
    dence because Dr. Kilday and the Levins had admitted that they made
    a strategic decision that the patent would be less vulnerable to poten-
    tial infringers if issued to Eastman rather than to Dr. Kilday. Accord-
    ingly, the district court held that the patent was invalid and that the
    contract between the Levins and Septodont was therefore unenforce-
    able for lack of consideration. The district court also granted sum-
    mary judgment to Septodont on the Levins’ indemnification claim,
    reasoning that the indemnity clause relied upon by the Levins could
    not reasonably be read to cover the costs of a lawsuit between the
    contracting parties.
    Subsequently, Septodont filed a motion for attorney fees under 
    25 U.S.C. § 285
    , which authorizes courts to award attorney fees to the
    "prevailing party" in "exceptional" patent cases. The Levins moved to
    strike the motion as untimely, arguing that it was filed after the dead-
    lines imposed by Rule 54(b)(2) and Local Rule 109.2. The district
    court granted their motion over Septodont’s objection. Levin v. Septo-
    dont, Inc., 
    2001 WL 224834
     (D. Md. Feb. 16, 2001). The court noted
    in a footnote that it would also have denied the motion on the merits,
    as it did not find the Levins’ conduct to be sufficiently "exceptional"
    to merit an award of attorney fees. 
    Id.
     at *2 n.1.
    The Levins appealed to this court on the breach of contract and
    indemnification claims. Septodont filed a motion to dismiss the Lev-
    ins’ appeal for lack of jurisdiction, but we denied the motion in an
    order issued on April 18, 2001. Septodont appeals the district court’s
    dismissal of its petition for attorney fees as untimely. We have juris-
    diction under 
    28 U.S.C. §§ 1291
     and 1294(1).
    II.
    Our review of the district court’s grant of summary judgment is de
    novo. Resorts of Pinehurst, Inc. v. Pinehurst Nat’l Corp., 
    148 F.3d 417
    , 420 (4th Cir. 1998). Summary judgment is warranted when there
    are no material facts in dispute and the moving party is entitled to
    judgment as a matter of law. Celotex Corp. v. Catrett, 
    477 U.S. 317
    ,
    322 (1986). The Levins conceded below that their contract with Sep-
    todont is unenforceable for lack of consideration if the ’657 patent is
    invalid. Thus, the issues in our review of the district court’s ruling on
    the breach of contract claim are (1) whether Dr. Kilday is an inventor
    LEVIN v. SEPTODONT, INC.                        7
    of the mouth rinse and, if so, (2) whether his erroneous omission from
    the patent can be corrected under 
    35 U.S.C. § 256
    . We first address
    the district’s court’s decision that Dr. Kilday is an inventor of the
    mouth rinse.
    Under 
    35 U.S.C. § 116
     a patented invention may be the work of
    two or more joint inventors. Failure to name all the true inventors will
    invalidate a patent under 
    35 U.S.C. § 102
    (f), Pannu v. Iolab Corp.,
    
    155 F.3d 1344
    , 1349-50 (Fed. Cir. 1998), unless the patent’s list of
    inventors can be corrected under 
    35 U.S.C. § 256
    , 
    id. at 1350
    . Once
    a patent is issued, however, its list of inventors is presumed to be cor-
    rect. Hess v. Advanced Cardiovascular Sys., Inc., 
    106 F.3d 976
    , 980
    (Fed. Cir. 1997). Attacks on the validity of a patent based on errors
    in the list of inventors are considered technical defenses and are disfa-
    vored. See General Motors Corp. v. Toyota Motor Co., 
    667 F.2d 504
    ,
    507 (6th Cir. 1981). A party attacking the patent on the ground that
    it fails to name a true inventor must prove that claim by clear and con-
    vincing evidence. Hess, 
    106 F.3d at 980
    . Here, the facts about the
    contributions of Dr. Kilday (and Dr. Levin) to the development of the
    mouth rinse are essentially undisputed. Dr. Levin had the original idea
    for a rinse that could be used to numb the mouth during dental proce-
    dures. Dr. Kilday suggested that benzocaine and phenol would be
    appropriate active ingredients for such a rinse, and he suggested the
    rough proportions of those ingredients that were used throughout the
    development process. In addition, Dr. Kilday recognized that the use
    of alcohol as a solvent caused an unpleasant burning sensation in
    patients’ mouths and went to Eastman for help in solving the problem
    of developing a non-alcoholic solvent. The critical question in this
    case is whether the district court erred by ruling that these facts make
    Dr. Kilday an inventor of the mouth rinse as a matter of law. See Ethi-
    con, Inc. v. U.S. Surgical Corp., 
    135 F.3d 1456
    , 1460 (Fed. Cir. 1998)
    (explaining that inventorship is a question of law to be reviewed
    "without deference").
    To invent something, in the lexicon of patent law, is to conceive
    it. See Burroughs Wellcome Co. v. Barr Lab., Inc., 
    40 F.3d 1223
    ,
    1227-28 (Fed. Cir. 1994) (stating that "[c]onception is the touchstone
    of inventorship"). Conception is "the formation in the mind of the
    inventor, of a definite and permanent idea of the complete and opera-
    tive invention, as it is hereafter to be applied in practice." 
    Id.
     at 1228
    8                      LEVIN v. SEPTODONT, INC.
    (internal quotation marks and citation omitted). An idea is "definite
    and permanent" when "only ordinary skill would be necessary to
    reduce the invention to practice, without extensive research or experi-
    mentation." 
    Id.
     Here, the patented mouth rinse was not fully con-
    ceived until the Eastman scientists figured out how to dissolve the
    active ingredients suggested by Dr. Kilday by using polyethylene gly-
    col and propylene glycol, for it was only at this point that a person
    of ordinary skill in the relevant arts would have known how to make
    the complete mouth rinse. Thus, Dr. Kilday was clearly not the sole
    inventor of the mouth rinse because he had not formed "a definite and
    permanent idea of the complete and operative invention." 
    Id.
     Never-
    theless, he may still be a joint inventor of the mouth rinse under 
    35 U.S.C. § 116
     because "it is not necessary that the entire inventive con-
    cept . . . occur to each of the joint inventors." Kimberly-Clark Corp.
    v. Procter & Gamble Distrib. Co., 
    973 F.2d 911
    , 916 (Fed. Cir. 1992)
    (internal quotation marks and citation omitted).
    A joint invention is "the product of a collaboration between two or
    more persons working together to solve the problem addressed." Bur-
    roughs Wellcome, 
    40 F.3d at 1227
    . Congress adopted more flexible
    requirements for joint inventorship in 1984 in an effort to recognize
    the realities of modern, team research efforts. See Patent Law Amend-
    ments Act of 1984, Pub. L. No. 98-622, § 104(a), 
    98 Stat. 3383
    , 3384-
    85. The current statute is meant to encompass a wide range of collab-
    orative relationships:
    Inventors may apply for a patent jointly even though (1)
    they did not physically work together or at the same time,
    (2) each did not make the same type or amount of contribu-
    tion, or (3) each did not make a contribution to the subject
    matter of every claim of the patent.
    
    35 U.S.C. § 116
    . The Federal Circuit has explained that a joint inven-
    tor must:
    (1) contribute in some significant manner to the conception
    or reduction to practice of the invention, (2) make a contri-
    bution to the claimed invention that is not insignificant in
    quality, when that contribution is measured against the
    dimension of the full invention, and (3) do more than merely
    LEVIN v. SEPTODONT, INC.                        9
    explain to the real inventors well-known concepts and/or the
    current state of the art.
    Pannu, 155 F.3d at 1351. We must decide whether Dr. Kilday’s con-
    tributions to the development of the mouth rinse make him a joint
    inventor under the Pannu standard. The question is a close one, and
    our task is made more difficult because the parties have advanced
    conflicting views about what this standard means.
    Septodont suggests that because "the critical question [of joint
    inventorship] is who conceived, as that term is used in the patent law,
    the subject matter of the claims [in the patent]," Ethicon, 
    135 F.3d at 1460
    , our task is simply to determine "whether [Dr. Kilday’s contri-
    bution to the mouth rinse] appears in the claimed invention," 
    id. at 1461
    . Applying this standard, Septodont argues that Dr. Kilday must
    be an inventor because the ’657 patent claims his proposed active
    ingredients, benzocaine and phenol, as essential components of the
    mouth rinse. The first eleven claims of the ’657 patent describe differ-
    ent versions of a mouth rinse consisting essentially of (A) "a topical
    anesthetic selected from the group including amethocaine, benzo-
    caine, cocaine, and their acid addition salts," (B) "polyethylene glycol
    having a number average molecular weight of 200 to 300," (C) an "ar-
    omatic organic antiseptic compound having one or more hydroxy
    groups attached directly to the benzene ring [e.g., phenol]", and (for
    many of the claims) (D), "a solvent selected from the group consisting
    of 1,2-propylene glycol, glycerol, and combinations thereof." While
    the claims for components (A) and (C) of the mouth rinse include a
    wider range of substances than benzocaine and phenol, the description
    of the invention in the patent states that "preferably" the topical anes-
    thetic (component (A)) of the mouth rinse is benzocaine and the anti-
    septic compound (component (C)) is phenol. Further, claim 4 of the
    ’657 patent specifically claims a version of the mouth rinse where the
    topical anesthetic is benzocaine and claim 5 specifically claims a ver-
    sion of the mouth rinse where the antiseptic compound is phenol. A
    significant contribution to even a single claim of a patent is enough
    to qualify a person as a joint inventor. Ethicon, 
    135 F.3d at 1460
    . In
    light of these points, Septodont concludes that Dr. Kilday must have
    made a "significant contribution" to the conception of the mouth rinse
    under Pannu because benzocaine and phenol figure prominently in
    the claims of the ’657 patent. The district court seems to have
    10                      LEVIN v. SEPTODONT, INC.
    accepted this reasoning. It observed that although the Eastman scien-
    tists solved the more difficult problem of developing a non-alcoholic
    solvent, "[i]t seems counterintuitive, at best, to argue that the individ-
    ual that contributed the active ingredients to a new formula should not
    be considered an inventor while the contributors of the solvents in
    which those active ingredients were dissolved are so considered." In
    short, the district court reasoned that Dr. Kilday must be an inventor
    because the patent claims a mouth rinse that consists in large part of
    ingredients suggested by Dr. Kilday.
    The Levins agree that Dr. Kilday suggested the active ingredients
    for the mouth rinse and identified the problem of developing a non-
    alcoholic solvent that would eliminate the burning sensation caused
    by early formulations of the mouth rinse. In their view, however, the
    fact that Dr. Kilday’s contributions appear in the claims for the mouth
    rinse is not enough to make him a joint inventor under Pannu: "Dr.
    Kilday’s suggestion of benzocaine and phenol as active ingredients
    was insignificant when measured against the full dimension of the
    patented oral rinse because it was not what made the invention non-
    obvious and thus subject to patent." Appellant’s Brief at 29. The Lev-
    ins suggest, then, that whether a contribution counts as "significant"
    under the Pannu standard for joint inventorship depends on the extent
    to which the contribution makes the invention patentable by making
    it novel (as required by 
    35 U.S.C. § 102
    ) or non-obvious (as required
    by 
    35 U.S.C. § 103
    ).
    We agree with the Levins that the significance of an alleged joint
    inventor’s contribution should be assessed by asking whether the con-
    tribution helped to make the invention patentable. Although the lan-
    guage of Ethicon appears to offer some support for Septodont’s
    position, the case law suggests that courts do not draw their conclu-
    sions about inventorship simply by looking to see whether an alleged
    joint inventor’s contributions appear in the language of the patent’s
    claims. For example, Hess involved an engineer at Raychem Corp.
    who argued that he should have been named as a co-inventor of a bal-
    loon angioplasty catheter. The engineer had suggested that the named
    inventors employ a special type of tubing manufactured by Raychem
    in the catheter. The named inventors accepted the engineer’s sugges-
    tion, and the patent for the catheter (
    U.S. Patent No. 4,323,071
    )
    explicitly refers to the Raychem tubing. Even though the Raychem
    LEVIN v. SEPTODONT, INC.                      11
    engineer’s contribution to the patented catheter appeared in the
    claims, the Federal Circuit ruled that he was not an inventor because
    he was "doing nothing more than explaining to the inventors what the
    then state of the art was and supplying a product to them for use in
    their invention." Hess, 
    106 F.3d at 981
     (internal quotation marks
    omitted). The engineer relied in part on an 1914 case which suggested
    that anyone who "‘contributes an independent part of the entire inven-
    tion, which is united with the parts produced by [others] and creates
    the whole . . . is a joint inventor, even though his contribution be of
    comparatively minor importance and merely the application of an old
    idea.’" 
    Id.
     (quoting DeLaski & Thropp Circular Woven Tire Co. v.
    William R. Thropp & Sons Co., 
    218 F. 458
    , 464 (D. N.J. 1914), aff’d
    
    226 F. 941
     (3d Cir. 1915)). This argument is strikingly similar to the
    position Septodont advances here, yet the Federal Circuit declined to
    accept the argument and observed that the reasoning of the DeLaski
    & Thropp court appeared to be inconsistent with both Supreme Court
    and Federal Circuit precedent. 
    Id.
     In Garrett Corp. v. United States,
    
    422 F.2d 874
     (Ct. Cl. 1970), the court considered an argument that
    claim 3 of a patent on a boarding ramp for inflatable life rafts (
    U.S. Patent No. 2,914,779
    ) was invalid for failure to join an inventor. The
    evidence of the alleged co-inventor’s contributions was unclear, but
    the court assumed for the sake of argument that he had "suggested the
    broad idea of a water ballast pocket for use in conjunction with the
    boarding ramp." 
    Id. at 881
    . Even though the language of claim 3
    included a specific reference to "a water ballast pocket at the outer
    ends of the [inflatable structural] beams [on the sides of the boarding
    ramp]," the court held that the person who suggested the idea of a
    water ballast pocket was not a joint inventor because that idea was
    "obvious in view of the prior art." 
    Id.
     Because the named inventor had
    conceived and developed the only non-obvious feature of claim 3, the
    court concluded that he was the sole inventor. 
    Id.
     In the light of Hess
    and Garrett, we conclude that the appearance of ingredients suggested
    by Dr. Kilday in the claims of the ’657 patent is not sufficient to make
    him a joint inventor.
    Reflection on the basic principles of patent law also supports our
    conclusion that a person does not qualify as an inventor simply
    because his contributions to an invention appear in the claims of the
    patent. A patentable invention need not be novel and non-obvious in
    every respect — it is enough if the claimed subject matter is an
    12                     LEVIN v. SEPTODONT, INC.
    improvement over the prior art in one limited respect. See 
    35 U.S.C. § 103
    (a) (stating that a patent may not be obtained when "the differ-
    ences between the subject matter sought to be patented and the prior
    art are such that the subject matter as a whole would have been obvi-
    ous at the time the invention was made to a person having ordinary
    skill in the art to which said subject matter pertains" (emphasis
    added)); Structural Rubber Products Co. v. Park Rubber Co., 
    749 F.2d 707
    , 715-16 (Fed. Cir. 1984) (explaining that 
    35 U.S.C. § 102
    prevents an invention from being patented only when a single refer-
    ence in the prior art includes every element of the invention). It fol-
    lows that many elements of an invention described in a patent claim
    will be neither novel nor non-obvious. See, e.g., Garrett, 
    422 F.2d at 879-80
     (explaining that a patent claim describing a boarding ramp for
    an inflatable life ramp was valid even though most of the elements
    comprising the claim were obvious in light of the prior art); Rival
    Mfg. Co. v. Dazey Products Co., 
    358 F.Supp. 91
    , 94 (W.D. Mo. 1973)
    (explaining that only one of the six elements in a patent claim was
    "essential to the existence of novelty or invention" while the other
    five elements were "conventional"). We find it implausible to say that
    a person who contributed only to the non-novel and/or obvious ele-
    ments of a claim can be called an inventor. A simple example illus-
    trates the point. The claims of a patent for the proverbial "better
    mousetrap" would necessarily include many elements that were pres-
    ent in ordinary, non-patentable mousetraps, but surely the only inven-
    tor of the new mousetrap is the person who conceived the features
    that made the new mousetrap an improvement over prior art. A person
    who told the real inventor about the features of existing mousetraps
    and their shortcomings is not an inventor because he does no more
    than explain "well-known concepts and/or the current state of the art."
    Pannu, 155 F.3d at 1351.
    In sum, we hold that the significance of an alleged joint inventor’s
    contribution under Pannu depends on whether that contribution
    helped to make the invention patentable. Here, Dr. Kilday’s undis-
    puted contributions were identifying the need to develop a non-
    alcoholic solvent and selecting benzocaine and phenol to be the active
    ingredients in the mouth rinse. Neither is sufficient to make him a
    joint inventor.
    We have little doubt that Dr. Kilday’s recognition of the need to
    develop a non-alcoholic solvent for the mouth rinse is not enough to
    LEVIN v. SEPTODONT, INC.                       13
    make him an inventor. "One who merely suggests an idea of a result
    to be accomplished, rather than means of accomplishing it, is not a
    joint inventor." Garrett, 
    422 F.2d at 881
    . See also Amax Fly Ash
    Corp. v. United States, 
    514 F.2d 1041
    , 1047 (Ct. Cl. 1975) (stating
    that the conception required for inventorship "must be more than the
    realization of a desirable result, and more than a mere hope or expec-
    tation" (internal citations omitted)). The harder question is whether
    Dr. Kilday is a joint inventor because he selected benzocaine and phe-
    nol as the active ingredients for the mouth rinse and determined their
    proper proportions in the mouth rinse formula. The Levins argue that
    the use of benzocaine and phenol in mouth care products was neither
    novel nor non-obvious, and that Dr. Kilday did no more than explain
    the existing state of the art to the scientists at Eastman. Two points
    support the Levins’ claim. First, a tentative Food and Drug Adminis-
    tration (FDA) monograph lists benzocaine and phenol as acceptable
    ingredients for use in over-the-counter mouth care products that can
    be sold to the public without FDA approval. See Oral Health Care
    Drug Products For Over-the-Counter Human Use, Tentative Final
    Monograph, 
    53 Fed. Reg. 2436
     (originally proposed Jan. 27, 1988)
    (to be codified at 21 C.F.R. pt. 356). Further, the proportions of ben-
    zocaine and phenol used in the mouth rinse fall within the ranges
    approved by the FDA monograph. Although Septodont correctly
    points out that the FDA monograph does not speak to the question of
    patentability, the monograph has considerable weight as evidence that
    the use of benzocaine and phenol in mouth care products was well
    known. Second, the Levins argue that the prosecution history of the
    ’657 patent indicates that the patent examiner judged the rinse to be
    non-obvious, and hence patentable, only because of the non-alcoholic
    solvents. In response, Septodont argues that the use of polyethylene
    glycol and propylene glycol as solvents was no less common than the
    use of benzocaine as a topical anesthetic and phenol as an antiseptic.
    In their view, it is the unique combination of the non-alcoholic sol-
    vents, the benzocaine, and the phenol that made the mouth rinse pat-
    entable. If Septodont is correct, it follows that Dr. Kilday is a joint
    inventor under Pannu because his contributions were essential to the
    patentability of the mouth rinse. To settle this disagreement, it will be
    necessary to review the prosecution history of the ’657 patent in some
    detail.
    The initial Eastman patent application claimed a "low-irritation
    anesthetic and antiseptic mouth rinse which is freeze-thaw stable
    14                     LEVIN v. SEPTODONT, INC.
    comprising" the various components listed above: a topical anesthetic
    (preferably benzocaine), an antiseptic (preferably phenol), polyethyl-
    ene glycol, and a solvent "from the group consisting of 1,2-propylene
    glycol, glycerol, and combinations thereof." The patent examiner ini-
    tially rejected the application primarily on the ground that the mouth
    rinse was obvious in light of the prior art. See 
    35 U.S.C. § 103
    ; Gra-
    ham v. John Deere Co., 
    383 U.S. 1
    , 17-18 (1966) (explaining the test
    for deciding whether an invention is non-obvious under § 103). East-
    man then amended its application to emphasize that the innovative
    aspect of the mouth rinse was the use of polyethylene glycol and pro-
    pylene glycol as non-alcoholic solvents to suspend the active ingredi-
    ents (benzocaine and phenol) in liquid form. It changed the language
    of the claims themselves by adding the word "non-alcoholic" (defined
    as "free of monohydritic alcohols") to its general description of the
    mouth rinse. It further substituted the words "consisting essentially
    of" for "comprising," a change designed to narrow the scope of the
    claims. No changes were made to the descriptions of the various com-
    ponents that make up the mouth rinse. Eastman argued to the patent
    examiner that nearly all of the prior art references included some form
    of monohydritic alcohol as a solvent. Only one of the prior references
    discussed by the patent examiner included polyethylene glycol with-
    out also using some form of monohydritic alcohol. Rencher ’802
    (
    U.S. Patent No. 5,192,802
    ) claims a teething gel consisting in part
    of benzocaine as a topical anesthetic and polyethylene glycol as the
    diluent. Eastman argued to the patent examiner that Rencher did not
    make the mouth rinse obvious because there the polyethylene glycol
    was used to make a gel rather than a liquid. Indeed, the whole point
    of the Rencher patent was to solve "the inherent challenge of main-
    taining the localization of the pharmaceutical at the point of contact."
    
    U.S. Patent No. 5,192,802
    . In other words, the function of the poly-
    ethylene glycol in the Rencher patent was to hold the benzocaine at
    a specific spot in the mouth so that its effects could be localized. In
    contrast, the mouth rinse at issue here was designed as a liquid so that
    it could be rinsed through the mouth so as to numb all the soft tissues
    in the mouth. The patent examiner apparently found merit in these
    arguments, for the Eastman patent application was ultimately allowed
    on August 20, 1996.
    We agree with the Levins that the most plausible interpretation of
    the prosecution history for the mouth rinse patent is that the patent
    LEVIN v. SEPTODONT, INC.                       15
    examiner regarded the idea of a mouth rinse with benzocaine and phe-
    nol to be obvious and only approved the patent when he understood
    the uniqueness of the non-alcoholic solvent developed by the Eastman
    engineers. Septodont argues that the use of polyethylene glycol and
    propylene glycol as solvents is no less common than the use of benzo-
    caine and phenol, but this seems to us to miss the point. The innova-
    tion here was not the use of polyethylene glycol and propylene glycol
    as solvents, but the use of those solvents to suspend benzocaine and
    phenol in a liquid solution. This is the aspect of the mouth rinse that
    was not obvious in light of the prior art, and it was solely the contri-
    bution of the Eastman scientists. We therefore conclude that the East-
    man scientists are properly named on the ’657 patent as the sole
    inventors of the mouth rinse.
    In sum, we hold that Dr. Kilday was not a joint inventor under
    Pannu because his contributions did not help to make the mouth rinse
    patentable. Accordingly, we hold that the ’657 patent is not invalid
    under 
    35 U.S.C. § 102
    (f) for failure to name the correct inventors,*
    and we therefore vacate the district’s court grant of summary judg-
    ment to Septodont on the Levins’ breach of contract claim. On
    remand, the district court may consider whether Septodont is never-
    theless entitled to summary judgment on the breach of contract claim
    on the ground that the mouth rinse failed the contractual requirement
    that it remain stable over a shelf life of one year.
    In light of our holding that Dr. Kilday is not a joint inventor of the
    mouth rinse, the question of whether the district court erred in ruling
    that the patent could not be corrected under 
    35 U.S.C. § 256
     is moot.
    The question of the timeliness of Septodont’s motion for attorney fees
    *We recognize that the district court failed to reach the question of
    whether Dr. Levin should have been listed as an inventor of the mouth
    rinse, but under the circumstances of this case there is no need for the
    district court to consider this question on remand. There is no dispute
    that Dr. Kilday’s contributions to the mouth rinse were more significant
    than Dr. Levin’s because Dr. Levin did no more than come up with the
    general idea of developing a mouth rinse to lessen the pain caused by
    dental procedures. "‘An idea of itself is not patentable.’" Diamond v.
    Diehr, 
    450 U.S. 175
    , 185 (1981) (quoting Rubber-Tip Pencil Co. v. How-
    ard, 
    20 Wall. 498
    , 507 (1874)). If, as we have held, Dr. Kilday was not
    an inventor of the mouth rinse, it follows a fortiori that Dr. Levin was
    not an inventor.
    16                     LEVIN v. SEPTODONT, INC.
    under 
    35 U.S.C. § 285
     is also moot because Septodont is no longer
    a prevailing party on the patent issues in this case.
    III.
    The only remaining question in the case is whether the district
    court properly granted summary judgment to Septodont on the Lev-
    ins’ claim for indemnification. The Levins argue that their contract
    with Septodont obligates Septodont to pay the Levins’ attorney fees
    in this case because Septodont agreed to indemnify the Levins
    "against any and all lapses, fees, cost, claims, expenses and/or litiga-
    tion, including reasonable attorneys’ fees and expenses, incurred . . .
    as a result of the transactions contemplated by this Agreement." The
    interpretation of the indemnity clause is governed by Maryland law,
    which states that a court’s task in interpreting contractual language is
    to determine "what a reasonable person in the position of the parties
    would have thought it meant." Auction & Estate Representatives, Inc.
    v. Ashton, 
    731 A.2d 441
    , 445 (Md. 1999) (internal quotation marks
    & citation omitted). We agree with the district court that the language
    relied upon by the Levins is a garden variety indemnification clause
    and that a reasonable person in the position of the Levins would have
    understood that the clause was not intended to cover the expenses of
    litigation between the contracting parties. Cf. Tony Guiffre Distrib.
    Co. v. Washington Metro. Area Transit Auth., 
    740 F.2d 295
    , 298 (4th
    Cir. 1984) (holding that an indemnity provision in a contract should
    be read to cover only attorney fees incurred in defending against law-
    suits by third parties). Accordingly, we affirm the district court’s
    grant of summary judgment to Septodont on the Levins’ claim for
    indemnification.
    IV.
    The district court’s grant of summary judgment to Septodont on the
    Levins’ breach of contract claim is vacated, and the case is remanded
    for further proceedings consistent with this opinion. The court’s grant
    of summary judgment to Septodont on the Levins’ indemnification
    claim is affirmed.
    AFFIRMED IN PART, VACATED
    IN PART, AND REMANDED
    LEVIN v. SEPTODONT, INC.                       17
    DIANA GRIBBON MOTZ, Circuit Judge, concurring in part and
    concurring in the judgment:
    I concur in parts I, III, and IV of the majority opinion for the rea-
    sons well stated therein. I concur in the result reached in part II of the
    majority opinion, but not in its rationale.
    Although I agree that the district court erred in granting summary
    judgment to Septodont on the question of whether Dr. Kilday was a
    joint inventor, unlike the majority, I do not believe that the evidence
    conclusively establishes that Dr. Kilday’s contributions "do not make
    him a joint inventor," ante at 3, and, therefore, that Dr. Kilday "is not
    a joint inventor of the mouth rinse." Ante at 15. As the majority recog-
    nizes, the question "is a close one." Ante at 9. Nonetheless, or perhaps
    because of this narrow margin, I would hold only that Septodont
    failed to establish by clear and convincing evidence, as it must, that
    Dr. Kilday was, indeed, a joint inventor of the ’657 patent. See Hess
    v. Advanced Cardiovascular Sys., Inc., 
    106 F.3d 976
    , 980 (Fed. Cir.
    1997) (stating that "[t]he burden of showing misjoinder or nonjoinder
    of inventors is a heavy one and must be proved by clear and convinc-
    ing evidence" (internal quotation marks and citation omitted)). The
    high "clear and convincing" standard must be met to rebut the pre-
    sumption that a patent’s named inventors "are the true and only inven-
    tors." Acromed Corp. v. Sofamor Danek Group, Inc., 
    253 F.3d 1371
    ,
    1379 (Fed. Cir. 2001) (citations omitted)). To date, Septodont has
    failed to meet this demanding standard. For this reason, I agree that
    we must reverse the grant of summary judgment to Septodont on the
    breach of contract claim.