UNPUBLISHED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Affirmed in part, vacated in part, and remanded by unpublished opin-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Unpublished opinions are not binding precedent in this circuit.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., 

(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. 

   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., 

, 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, 

,
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.,

, 1349-50 (Fed. Cir. 1998), unless the patent’s list of
inventors can be corrected under 35 U.S.C. § 256, 

a patent is issued, however, its list of inventors is presumed to be cor-
rect. Hess v. Advanced Cardiovascular Sys., Inc., 

, 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., 

,
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. 

. 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., 

, 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., 

,
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." 

                     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." 

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." 

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., 

, 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 

. 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.

. 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]," 

, our task is simply to determine "whether [Dr. Kilday’s contri-
bution to the mouth rinse] appears in the claimed invention," 

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. 

. 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." 

(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.’" 

Thropp Circular Woven Tire Co. v.
William R. Thropp & Sons Co., 

, 464 (D. N.J. 1914), aff’d

(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. 

v. United States,

(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." 

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." 

inventor had
conceived and developed the only non-obvious feature of claim 3, the
court concluded that he was the sole inventor. 

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., 

, 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., 

(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., 

, 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."

.

   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." 

. See also Amax Fly Ash
Corp. v. United States, 

, 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., 

, 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, 

, 185 (1981) (quoting Rubber-Tip Pencil Co. v. How-
ard, 

, 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, 

, 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., 

, 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., 

, 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., 

,
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.