NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

TRUSTID, INC.,

Appellant

v.

NEXT CALLER, INC.,

Cross-Appellant

______________________

2020-1950, 2020-2028

______________________

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2019-

00039.

______________________

Decided: September 27, 2021

______________________

BYRON LEROY PICKARD, Sterne Kessler Goldstein & 

Fox, PLLC, Washington, DC, argued for appellant. Also 

represented by RICHARD M. BEMBEN, MICHAEL D. SPECHT. 

 SARAH CHAPIN COLUMBIA, McDermott, Will & Emery 

LLP, Boston, MA, argued for cross-appellant. Also represented by IAN BARNETT BROOKS, NICOLE M. JANTZI, PAUL 

MICHAEL SCHOENHARD, Washington, DC.

 ______________________

Case: 20-1950 Document: 62 Page: 1 Filed: 09/27/2021
2 TRUSTID, INC. v. NEXT CALLER, INC.

Before REYNA, SCHALL, and STOLL, Circuit Judges.

SCHALL, Circuit Judge.

TRUSTID, Inc. (“TRUSTID”), the owner of U.S. Patent 

No. 9,001,985 (“the ’985 patent”), appeals a final written 

decision of the Patent Trial and Appeal Board (“Board”) determining that certain claims of the ’985 patent were

shown to be unpatentable. Next Caller Inc. v. TRUSTID, 

Inc., No. IPR2019-00039 (P.T.A.B. Feb. 24, 2020), Paper 

No. 67, Corrected Non-Confidential Joint Appendix (“J.A.”) 

1–92 (“Final Written Decision”). Next Caller, Inc. (“Next 

Caller”) cross-appeals the Board’s determination that other 

claims of the ’985 patent were not shown to be unpatentable. We affirm-in-part, vacate-in-part, and remand. In 

particular, we affirm the Board’s decision finding claims 1–

7, 12–14, 16–18, and 22 of the ’985 patent unpatentable. 

However, because the Board did not adequately explain the 

reasoning for its non-obviousness determination as to 

claims 8–11, 19, and 20 of the ’985 patent, we vacate the 

Board’s decision with respect to those claims and remand 

for further proceedings.

BACKGROUND

I.

The ’985 patent is directed to preventing call spoofing 

by discovering and reporting the trustworthiness and credibility of calling party number information associated with 

an incoming call. See ’985 patent Abstract, col. 1 

l. 23–col. 2 l. 9. Claim 1 of the ’985 patent recites:

1. A method of determining a source origin confidence metric of a calling party number or billing 

number associated with an incoming call to a called 

party telephonic device from a calling party telephonic device, comprising:

receiving by an electronic system associated with 

the called party telephonic device the calling party 

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TRUSTID, INC. v. NEXT CALLER, INC. 3

number or billing number, wherein the electronic 

system receives the calling party number or billing 

number from the called party telephonic device;

after receiving the calling party number or billing 

number and before the incoming call is answered, 

gathering by the electronic system associated with 

the called party telephonic device operational status information associated with the calling party 

number or billing number, and

determining by the electronic system associated 

with the called party telephonic device the source 

origin confidence metric for the calling party number or billing number.

Id. at col. 15 ll. 2–19.

Claim 4 depends from claim 1 and further recites “determining by the electronic system associated with the 

called party telephonic device whether the format of the 

calling party number or billing number is valid.” Id. at 

col. 15 ll. 29–32. Claim 8 also depends from claim 1 and 

recites “adjusting . . . the source origin confidence metric 

based on personal risk factors of an entity associated with 

the calling party number or billing number.” Id. at col. 15 

ll. 46–50.

II.

Next Caller petitioned for inter partes review (“IPR”) of 

all of the claims of the ’985 patent after TRUSTID brought 

suit against it for infringement. The petition presented

four grounds of invalidity, three of which are at issue in 

this appeal. Ground 2 challenged claims 1–7, 12–18, 21, 

and 22 as obvious over the combination of U.S. Patent Publication No. 2007/0201625 (“Martin”) in view of U.S. Patent 

Publication No. 2007/0081648 (“Abramson”). Grounds 3

and 4 challenged claims 8–11, 19, and 20 as obvious over a 

combination of Martin, and then Martin with Abramson,

both in view of U.S. Patent No. 7,912,192 (“Kealy”).

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4 TRUSTID, INC. v. NEXT CALLER, INC.

The Board instituted IPR and in due course issued the

Final Written Decision. In its decision, the Board determined that claims 1–7, 12–14, 16–18, and 22 were unpatentable because they would have been obvious in view 

of the combination of Martin and Abramson.1 J.A. 90. In

its analysis for the “operational status information” claim 

element of independent claims 1 and 13, the Board discussed Abramson’s teaching of “gathering and using in its 

checks information that is the same as that gathered and 

used in the ’985 [p]atent.” Id. at 55, 65. When addressing 

the “source origin confidence metric” element of independent claims 1 and 13, the Board relied on an embodiment set 

forth in Abramson ¶ 74 that was not explicitly set forth in 

Next Caller’s petition. Compare id. at 41–42, with id.

at 192–95. Finally, the Board also found that Martin 

taught the limitations of dependent claim 4, citing Martin’s 

teaching of “using the call source identification information 

transmitted by the telephone system (typically between the 

first and second ring of a call) to make decisions as to how 

to process the call and process[ing] valid calls.” Id. at 70

(citing Martin ¶ 6).

As noted, the Board determined that Next Caller had 

not shown claims 8–11, 19, and 20 to be unpatentable. The 

Board rejected Next Caller’s argument that Kealy’s teaching of reducing a trust rating based on complaints renders 

obvious the claim limitation “adjusting . . . the source 

origin confidence metric based on personal risk factors” of 

claim 8. Id. at 87. The Board stated that Next Caller “[did] 

not explain how Kealy’s complaints are ‘personal risk factors’” and did “not show[ ] why or how a person having ordinary skill in the art would have modified the Martin and 

Abramson combination with Kealy to perform the further 

1 The Board held claims 15 and 21 had not been 

shown to be unpatentable. Those claims are not at issue 

on appeal.

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TRUSTID, INC. v. NEXT CALLER, INC. 5

step of ‘adjusting . . . the source origin confidence metric 

based on personal risk factors.’” Id. at 87–88.

TRUSTID sought rehearing of the Board’s determination with respect to claims 1–7, 12–14, 16–18, and 22, arguing that the Board erroneously relied on Abramson as

teaching the claimed “operational status information” 

when Next Caller had relied on Martin for this claim element. J.A. 952–55. The Board denied rehearing, concluding that the petition “identifies disclosures of both Martin

and Abramson relied upon for the elements of the claims, 

including ‘operational status information.’” J.A. 98–99.

TRUSTID and Next Caller timely appealed and crossappealed, respectively. We have jurisdiction under 

28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

I.

We review the Board’s legal determinations, including 

obviousness, de novo, and its underlying factual findings 

for substantial evidence. Belden Inc. v. Berk-Tek LLC, 

805 F.3d 1064, 1073 (Fed. Cir. 2015). A finding is supported by substantial evidence if a reasonable mind might 

accept the evidence as adequate to support the finding. 

Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).

We review the Board’s decision for compliance with the 

Administrative Procedure Act (“APA”) de novo. We must

“hold unlawful and set aside agency action, findings, and 

conclusions found to be . . . arbitrary, capricious, an abuse 

of discretion, or otherwise not in accordance with law,” 

“without observance of procedure required by law,” or “unsupported by substantial evidence.” 5 U.S.C. § 706.

Whether a ground the Board relied upon was new, requiring a new opportunity to respond, is a question of law that 

we review de novo. In re NuVasive, Inc., 841 F.3d 966, 970 

(Fed. Cir. 2016).

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6 TRUSTID, INC. v. NEXT CALLER, INC.

II.

We begin with TRUSTID’s appeal. TRUSTID makes 

three arguments, which we address in turn.

A.

TRUSTID’s first argument is that the Board violated 

the APA in the Final Written Decision by relying on 

Abramson to teach the claimed “operational status information” element of independent claims 1 and 13, when

Next Caller’s petition, the Board’s institution decision, and 

a decision of the Board denying rehearing of the institution 

decision had relied solely on Martin for this claim element. 

TRUSTID Br. 9–14, 25–29. In making this argument, 

TRUSTID relies on EmeraChem Holdings, LLC 

v. Volkswagen Group of America, Inc., 859 F.3d 1341 

(Fed. Cir. 2017), where our court held the Board’s final 

written decision violated the APA because it relied on a different reference than that relied upon in the petition or the 

institution decision. TRUSTID separately argues that 

there is no evidence in the record for the Board to find that 

Martin teaches or makes obvious the claimed “operational 

status information.” TRUSTID Br. 28–29.

In response, Next Caller argues that the Board found 

that Martin alone teaches “operational status information,” that that finding is supported by substantial evidence, and that the Board’s finding that Abramson also 

taught that element was “nothing more than a permissible 

identification of an alternative basis.” Next Caller Br. 22, 

34–37. We agree.

In the Final Written Decision, in its analysis for the 

“operational status information” element of claim 1, the 

Board began by noting the argument Next Caller made in 

the petition, including Next Caller’s citations to Martin 

and to a declaration of Next Caller’s expert, Mr. James 

Geier (“Geier Decl.”):

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TRUSTID, INC. v. NEXT CALLER, INC. 7

Petitioner points to Martin’s teaching of central 

monitoring station 100 processing status bits 

210–330 if the aforementioned match is found between the received caller ID information 75 and information 200. Pet. 31–34 (citing, e.g., [Martin] 

¶¶ 6, 27, Figs. 1, 2, 5; [Geier Decl.] ¶¶ 92–97). Petitioner also points to Martin’s teaching of exemplary status bits 210–330. Pet. 13–14, 32 n.10 

(citing, e.g., [Martin] ¶¶ 21–23, 28; [Geier Decl.] 

¶¶ 50–51, 98).

J.A. 53. The Board then stated:

We agree with Petitioner and credit and give 

weight to the testimony of Mr. Geier because Petitioner’s contentions and Mr. Geier’s testimony are 

consistent with the evidence of record. For instance, Martin teaches if the received caller ID information 75 matches caller ID information 200 

stored in memory 140, processing circuits 130 read 

status bits 210–330. [Martin] ¶¶ 6, 27, Fig. 5.

J.A. 54. We agree with Next Caller that this constitutes a

finding by the Board that Martin teaches the claimed “operational status information.”

We also agree with Next Caller that this finding is supported by substantial evidence. Martin explains that “the 

processing circuits 120 read status bits 210–330 associated 

with the caller ID information 200.” Martin ¶ 27; see also 

id. at ¶¶ 6, 21–23, 28, Figs. 1, 2, 5. Further, Mr. Geier explained that Martin’s “status information comprises various forms of information as illustrated in Figure 2,” which 

shows status bits 210–330. J.A. 1304–05 ¶ 97. And according to Mr. Geier, a person of ordinary skill in the art “would 

have understood that Martin’s status information is composed of ‘operational status information.’” J.A. 1305 ¶ 98; 

see also J.A. 1282 ¶¶ 50–51; J.A. 1302 ¶ 92; J.A. 1304 

¶¶ 95–97.

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8 TRUSTID, INC. v. NEXT CALLER, INC.

It is true, however, that the Board then pointed to 

Abramson’s teaching of “gathering and using in its checks 

information that is the same as that gathered and used in 

the ’985 patent.” J.A. 55. Its reliance on Abramson as a 

supplemental teaching of this claim element for claim 1, in 

view of its prior finding that Martin teaches the element, 

was, at most, harmless error. See Yeda Rsch. v. Mylan 

Pharmas. Inc., 906 F.3d 1031, 1042 (Fed. Cir. 2018) (concluding that the Board’s reliance on a reference, to the extent reliance on that reference was improper, was a 

harmless error because substantial evidence otherwise 

supported the Board’s conclusion).

We reach the same conclusion for independent 

claim 13. Although the Board’s discussion of the “operational status information” element for that claim pertained 

primarily to Abramson, the Board noted that Next Caller

“relie[d] on the same teachings discussed with respect to 

claim 1.” J.A. 65. The Board then referred back to its 

claim 1 analysis (e.g., “see supra III.E.4.c.”), which concluded that Martin taught this element, before additionally 

finding that Abramson taught the claimed “operational 

status element.” Id. at 65–66. As with claim 1, the Board’s

reliance on Abramson as a supplemental teaching of this 

claim element for claim 13 was, at most, harmless error.

B.

TRUSTID’s second argument is that the Board violated 

the APA when it relied on a different embodiment of 

Abramson to teach the claimed “source origin confidence 

metric” than Next Caller had relied upon in its petition. 

Specifically, TRUSTID contends that it did not have notice 

and an opportunity to respond to the theory that Abramson’s processing of tasks 501 through 503, as illustrated in 

Abramson’s Figure 5 and described in ¶ 74, generates a 

number within a range of zero to three that corresponds to 

the claimed “source origin confidence metric.” TRUSTID 

Br. 30–31; TRUSTID’s Resp. and Reply Br. 7–9.

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TRUSTID, INC. v. NEXT CALLER, INC. 9

Next Caller responds that TRUSTID had the opportunity to respond, and did respond, to Next Caller’s position, which was consistent with the Board’s findings on this 

claim element. Next Caller Br. 38–41.

“The notice and opportunity to be heard provisions of 

the APA have been applied ‘to mean that an agency may 

not change theories in midstream without giving respondents reasonable notice of the change’ and ‘the opportunity

to present argument under the new theory.’” Genzyme 

Therapeutic Prods. L.P. v. Biomarin Pharm. Inc., 825 F.3d 

1360, 1366 (Fed. Cir. 2016) (quoting Belden, 805 F.3d 

at 1080). We agree with Next Caller that there was no APA 

violation here because TRUSTID received adequate notice 

and an opportunity to be heard.

In the petition, Next Caller pointed to Abramson’s 

teaching of performing three tests (tasks 501, 502, and 503) 

that pertain to characteristics of the calling party’s terminal. J.A. 192–94 & nn. 6, 7 (citing, inter alia, Abramson 

¶¶ 66–72, 75–82, and Fig. 5; J.A. 1299 (Geier Decl.)

¶¶ 76–83). If all three tests are passed, then call privileges 

are granted; if any test is not passed, the call is terminated. 

Id. at 194–95 n.7. Next Caller’s petition argued that this 

teaches a “source origin confidence metric” if the term is 

broad enough to cover a binary result. In the alternative, 

Next Caller stated:

A [person of skill in the art] would have found [sic]

obvious to modify Abramson to assess each characteristic and assign a probabilistic score—if, e.g., 

only two of three tasks resulted in a “yes.” Under 

such circumstances, Abramson could advantageously gain greater flexibility in evaluating callers—assigning weight to certain characteristics

and determining validity based on a surpassed 

threshold. These modifications would have been 

straightforward to a [person of skill in the art], as 

they would require minor changes to the 

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10 TRUSTID, INC. v. NEXT CALLER, INC.

programming of Martin’s and Abramson’s processors, and would have yielded predictable results. 

[Geier Decl.] ¶¶ 84–86.

J.A. 194–95 n.7. In its response to the petition, TRUSTID 

disputed that Abramson taught or rendered obvious the 

claimed “metric.” J.A. 384–85, 389–92. In reply, Next 

Caller explained that “Abramson at minimum renders obvious the claimed metric,” cited ¶¶ 65–73 of Abramson, and

rebutted TRUSTID’s arguments with reference to Abramson’s ¶ 74. J.A. 509. Next Caller stated:

Abramson suggests performing a calculation using 

known information to decide whether to grant privileges. . . . [A person of ordinary skill in the art]

would have understood one way to address the situation where privileges could still be granted despite not having all “yeses” would have been to 

weigh/score the results and decide whether to 

grant access based on the score. Such a score could 

be determined in the same manner as described 

above.

Id. at 509–10 (footnote omitted); see also J.A. 506–07 (discussing Martin and explaining that “[o]ne obvious manner 

of making that determination would have been to weigh 

each of the status bits/bytes and then output a metric (e.g., 

number in a range) based on assigned weights of the status 

bits/bytes that could be used to determine whether the call 

is valid.” (footnote omitted)).

In its sur-reply, TRUSTID cited ¶ 74 of Abramson to 

show that “because Abramson already discloses a mechanism for handling the situation where one of the tasks returns an unexpected result,” a person of ordinary skill in 

the art would not have modified Abramson to generate a 

metric based on considering two of three tasks. J.A. 627. 

TRUSTID pointed to cross-examination testimony of 

Mr. Geier, which it contended showed that Mr. Geier’s 

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TRUSTID, INC. v. NEXT CALLER, INC. 11

opinions regarding weighing status bits/bytes and outputting a score/metric were “general.” J.A. 626.

In the Final Written Decision, the Board construed 

“source origin confidence metric” to exclude binary measurements. J.A. 29–30, 40. Citing to ¶ 74 of Abramson, the 

Board stated:

Also consistent with Petitioner’s contentions and 

Mr. Geier’s testimony, Abramson further describes 

an alternative embodiment in which “exchange 205 

might still grant privileges, or a limited set of privileges, even if at least one of the results is unexpected, indeterminate, or unknown-for example, 

the received telephone type is unexpected but the 

received signaling protocol is as expected.” 

J.A. 41 (quoting Abramson ¶ 74) . The Board continued:

Abramson discloses three separate tasks, i.e., tasks 

501, 502, and 503, each [of] which may result in 

“yes” or “no.” [Abramson] ¶¶ 66–74, Fig. 5. Processing of tasks 501 through 503 illustrated in the 

flowchart depicted in Figure 5 results in a number 

that is a measurement of characteristics that 

agreed with what was expected. Id. That number 

is within a range of “0” through “3.” Id.

J.A. 41–42. The Board credited Mr. Geier’s testimony that 

a person of ordinary skill in the art “would have found [sic] 

obvious to modify Abramson to access each characteristic 

and assign a probabilistic score—if, e.g., only two of three 

tasks resulted in a ‘yes.’” J.A. 42 (emphasis omitted) (quoting J.A. 1300 (Geier Decl.) ¶ 86). While TRUSTID’s expert, 

Dr. Leonard J. Forys, disagreed with Mr. Geier, the Board 

“credit[ed] and [gave] significant weight to the testimony of 

Mr. Geier over that of Dr. Forys” because it found Mr. 

Geier’s testimony to be “consistent with the evidence of record,” specifically, Abramson ¶ 74 itself. J.A. 43.

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12 TRUSTID, INC. v. NEXT CALLER, INC.

We disagree with TRUSTID that it did not have notice 

and an opportunity to respond to the theory the Board relied upon. Although presented in different terms, the 

Board’s finding that Abramson’s tasks 501 through 503 

could be processed to result in a number that is a measurement of characteristics and that is within a range of “0” 

through “3” is not an altogether different theory from that 

presented in the petition or in Next Caller’s reply. See Arthrex, Inc. v. Smith & Nephew, Inc., 935 F.3d 1319, 1326–

28 (Fed. Cir. 2019) (“[T]he mere fact that the Board did not 

use the exact language of the petition in the final written 

decision does not mean it changed theories in a manner inconsistent with the APA and our case law.”). As noted, the 

petition indicated that a person of ordinary skill in the art

“would have found [sic] obvious to modify Abramson to assess each characteristic and assign a probabilistic score—

if, e.g., only two of three tasks resulted in a ‘yes.’” J.A. 194–

95 n.7. In reaching its conclusion, moreover, the Board 

cited the same portions of Abramson cited in the petition 

and in Next Caller’s reply, to which TRUSTID was given 

the opportunity to respond, and did in fact respond. We 

therefore reject TRUSTID’s argument that the Board’s Final Written Decision violated its procedural rights with respect to the “source origin confidence metric” claim element

of independent claims 1 and 13.

C.

Third, TRUSTID argues that the Board’s finding that 

Martin teaches the limitations of dependent claim 4 is not 

supported by substantial evidence. Claim 4 recites “determining by the electronic system associated with the called 

party telephonic device whether the format of the calling 

party number or billing number is valid.” ’985 patent 

col. 15 ll. 29–32.

TRUSTID contends that Martin compares information 

about the incoming call, such as its caller ID information, 

to a list of numbers stored in its memory, and processes a 

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TRUSTID, INC. v. NEXT CALLER, INC. 13

call only when there is a match. According to TRUSTID, 

however, “[c]hecking to see whether two numbers 

match . . . is not determining whether a telephone number 

is properly formatted.” TRUSTID Resp. and Reply Br. 11; 

see also TRUSTID Br. 23–24, 31–33. TRUSTID contends 

that Mr. Geier conceded that if there is no match “you 

wouldn’t know something about formatting.” TRUSTID 

Br. 33 (quoting J.A. 4649).

Next Caller responds that the Board’s findings with respect to claim 4 are supported by substantial evidence, including Martin ¶¶ 6 and 27, and the testimony of

Mr. Geier. Next Caller Br. 41–43. Next Caller points to 

Mr. Geier’s declaration testimony that a person of ordinary 

skill in the art “would have understood that if there was no 

match, one reason for that ‘no match’ is that the format of 

the call source identification is not valid. Similarly, a 

match would indicate that the format is valid.” Id. at 42 

(quoting J.A. 1313 (Geier Decl.) ¶ 123). Alternately, Next 

Caller asserts, Mr. Geier explained that a person of ordinary skill would have found the limitation obvious. Id.

We agree with Next Caller. Martin discloses checking 

the validity of an incoming call, and processing only valid 

calls:

The central monitoring station will process the call 

by checking if the call source identification information matches call source identification information stored in memory, and it will check status 

data that may be associated with the call source 

identification information, also stored in memory, 

to determine if the call should be disconnected, 

transferred, or connected to the receiver. Since the 

receiver only processes valid (legitimate) local 

alarm system reports, the lines are less likely to be 

tied up by invalid alarm calls and the efficiency of 

the alarm answering process is increased.

. . .

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14 TRUSTID, INC. v. NEXT CALLER, INC.

. . . [T]he processing circuits 130 look for a match 

between the received caller ID information 75 and 

the caller ID information 200 stored in memory 

140. If a match is not found, the processing circuits 

130 cause the switching circuits 120 to connect the 

call to the invalid alarm call station 195. . . . If 

there is a match, the processing circuits 120 read 

the status bits 210–330 associated with the caller 

ID information 200. If the processing circuits 120 

determine the call is a valid alarm call, the processing circuits 130 cause the switching circuits 

120 to connect the call to the receiver 150 and 

transmit the status information 145.

Martin ¶¶ 6, 27. Mr. Geier explained that a person of skill 

in the art “would have understood that if there was no 

match, one reason for that ‘no match’ is that the format of 

the call source identification is not valid.” J.A. 1313 (Geier 

Decl.) ¶ 123. That a “no match” determination does not 

necessarily provide information about whether the format 

is valid does not mean Martin does not teach performing 

the claimed “determining” when it does find a match. As 

Mr. Geier explained, “a match would indicate that the format is valid.” Id.2

Accordingly, we agree with Next Caller that the 

Board’s finding that Martin teaches claim 4 is supported 

by substantial evidence.

III.

We turn next to Next Caller’s cross-appeal. Next Caller 

argues that the Board erred when it determined that 

2 As we have explained, “a prior art product that 

sometimes, but not always, embodies a claimed method 

nonetheless teaches that aspect of the invention.” HewlettPackard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed. 

Cir. 2003).

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TRUSTID, INC. v. NEXT CALLER, INC. 15

claims 8–11, 19, and 20 of the ’985 patent had not been 

shown to be unpatentable. Next Caller takes issue with 

the Board’s rationale with respect to those claims, urging 

that it was insufficient under In re NuVasive, Inc., 842 F.3d 

1376 (Fed. Cir. 2016), and that the Board disregarded relevant findings regarding Kealy that had been made by the 

patent examiner during examination of the application 

that issued as the ’985 patent. Next Caller Br. 24–31. Next 

Caller contends that the Board erred when it failed to defer 

to the examiner’s previous findings and because it did not 

address the petition’s evidence or articulate any rationale 

for rejecting it. Id.

TRUSTID responds that Next Caller waived or forfeited its arguments regarding Kealy by failing to request 

that the Board defer to the examiner’s findings. TRUSTID 

Resp. and Reply Br. 23–26. TRUSTID also argues that 

“there is no legal authority requiring the Board to defer to 

original prosecution in an IPR.” Id. at 26. Further, 

TRUSTID contends that the Board’s reasoning was sufficiently articulated and supported by substantial evidence. 

Id. at 29–33.

During examination of the application that ultimately 

issued as the ’985 patent, the examiner issued an Office 

Action in which the application claims that correspond 

with issued claims 8–10, 19, and 20 were rejected as obvious over a combination of references including Kealy. The 

Office Action stated:

[U.S. Patent No. 5,963,625 to Kawecki et al. 

(“Kawecki”)] teaches all subject matters as claimed 

above, except for the features of adjusting the 

source origin confidence metric including one or 

more fraud score, risk score, etc.; storing and retrieving them from an external database. However 

[Kealy] teaches trust ratings embedded in certificates of calling device [sic], and a method of managing trust ratings based on fraud and risk factors 

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16 TRUSTID, INC. v. NEXT CALLER, INC.

such as accumulated complaints, etc. When a 

quantity of accumulated complaints exceeded a 

given threshold or no complaints in a given time, a 

trust rate of a given calling device is adjusted such 

as reduced or increased (col. 14, line 24 through col. 

15, line 16).

Therefore, it would have been obvious to one of 

ordinary skill in the art at the time the invention 

was made to incorporate the use of the features of 

adjusting the source origin confidence metric including one or more fraud score, risk score, etc.; 

storing and retrieving them from an external database, as taught by Kealy, into [sic] view of Kawecki 

in order to certify the calling device for calls from 

unwanted “junk” phone calls.

J.A. 1120–21.

Next Caller provided a copy of the office action with its 

petition. J.A. 174. Next Caller also quoted the examiner’s

statement of what Kealy teaches, including the examiner’s 

citation to column 14, line 24, through column 15, line 16,

of Kealy. Id. In its claim charts and its accompanying note, 

Next Caller pointed to Kealy’s teaching of “reducing a trust 

rating of a calling party based on the number of complaints 

received,” J.A. 210 n. 22, and cited Kealy itself and

Mr. Geier’s explanation of Kealy. See J.A. 209–12 & n. 22

(citing Kealy at Abstract, col. 3 ll. 28–36, col. 14 ll. 13–20, 

and col. 14 l. 58–col. 15 l. 6; Geier Decl. ¶¶ 147–51).

In addition, in the petition, Next Caller asserted that 

Kealy’s teachings of trust ratings would have been beneficial “to further bolster Martin’s [and Abramson’s] incoming 

call processing system[s]” and “particularly beneficial to

Martin’s assessment of VoIP calls,” and such a motivation

would have had the benefit of “reduc[ing] costs associated” 

with such calls. Id. at 187, 188. The petition stated:

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A [person of ordinary skill in the art] would have 

found it obvious and straightforward to use Kealy’s 

advantageous teachings of trust ratings to further 

assess the legitimacy of an alarm call in Martin’s 

system. A [person of ordinary skill in the art] 

would have understood how to make the modification to Martin’s program, and such a modification 

would have been routine and predictable. Indeed, 

Martin’s status information is readily adaptable 

and could maintain trust ratings as part of its “additional information.” [Martin ¶ 23], Fig. 2[,] 

[Geier Decl.] ¶ 67.

J.A. 188; see also id. at 188–89 (citing Geier Decl. ¶ 69).

As noted, in the Final Written Decision, the Board rejected Next Caller’s argument that Kealy’s teaching of reducing the trust rating based on complaints rendered

obvious the claim limitation of adjusting the source origin 

confidence metric based on personal risk factors, stating 

that Next Caller “[did] not explain how Kealy’s complaints 

are ‘personal risk factors’” and did “not show[ ] why or how 

a person having ordinary skill in the art would have modified the Martin and Abramson combination with Kealy to 

perform the further step of ‘adjusting . . . the source origin 

confidence metric based on personal risk factors.’” 

J.A. 87–88. The Board made this statement after first reciting certain of Next Caller’s arguments, and then block 

quoting column 14, line 58, through column 15, line 6 of 

Kealy.

We agree with TRUSTID that there is no legal basis for 

the proposition the Board must defer to the examiner’s previous findings in deciding the merits of an IPR. Indeed,

“the Supreme Court has characterized the ‘congressional 

objective’ of the IPR process as ‘giving the Patent Office significant power to revisit and revise earlier patent grants.” 

Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1021 

(Fed. Cir. 2017) (quoting Cuozzo Speed Techs., LLC v. Lee, 

Case: 20-1950 Document: 62 Page: 17 Filed: 09/27/2021
18 TRUSTID, INC. v. NEXT CALLER, INC.

136 S.Ct. 2131, 2139–40 (2016)). That said, we agree with 

Next Caller that the Board’s analysis with respect to 

Kealy’s teachings and motivation to combine were insufficient. “[T]he Board is obligated to provide an administrative record showing the evidence on which the findings are 

based, accompanied by the agency’s reasoning in reaching 

its conclusions.” Alacritech, Inc. v. Intel Corp., 966 F.3d 

1367, 1370 (Fed. Cir. 2020) (quoting TQ Delta, LLC v. Cisco 

Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019)). “We do 

not require ‘perfect explanations,’ and ‘we will uphold a decision of less than ideal clarity if the agency’s path may reasonably be discerned.’” Id. at 1370–71 (quoting NuVasive,

842 F.3d at 1382–83). “We do, however, require that the 

Board’s own explanation be sufficient ‘for us to see that the 

agency has done its job.’” Id. (quoting NuVasive, 842 F.3d 

at 1383). Here, the Board merely partially reiterated and 

summarily rejected Next Caller’s arguments without explanation. This is not sufficient under the APA and our 

precedent. NuVasive, 842 F.3d at 1383 (explaining that the 

Board cannot “summarize and reject arguments without 

explaining why [it] accepts the prevailing argument.”). 

Thus, while there is no legal basis to require that the Board 

have deferred to the examiner’s reasoning, the Board did 

need to have provided its own reasoning.

CONCLUSION

For the reasons set forth above, we affirm the Board’s

decision finding claims 1–7, 12–14, 16–18, 21, and 22 of the 

’985 patent unpatentable. We vacate the Board’s non-obviousness determination as to claims 8–11, 19, and 20 of the 

’985 patent and remand for further proceedings consistent 

with this opinion.

AFFIRMED-IN-PART, VACATED-IN-PART, AND 

REMANDED

COSTS

No costs.

Case: 20-1950 Document: 62 Page: 18 Filed: 09/27/2021