DCT
1:24-cv-01386
Tracer Imaging LLC v. Mixtiles Ltd
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tracer Imaging LLC (Delaware)
- Defendant: Mixtiles, Ltd. (Israel) and Mixtiles USA, Inc. (Delaware)
- Plaintiff’s Counsel: Shaw Keller LLP; Leason Ellis LLP
- Case Identification: 1:24-cv-01386, D. Del., 04/09/2025
- Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant Mixtiles USA, Inc. is a Delaware corporation that, along with its parent Mixtiles, Ltd., conducts substantial business and sells the accused products within the district.
- Core Dispute: Plaintiff alleges that Defendants’ repositionable photo tile products infringe a patent related to a magnetic framing system for damage-free wall mounting.
- Technical Context: The technology addresses the consumer market for wall decor, specifically providing systems that allow users to mount and easily reposition picture frames without using tools or creating holes that damage walls.
- Key Procedural History: Plaintiff alleges it sent a letter to Defendant on November 21, 2024, identifying U.S. Patent No. 12,108,889 and providing a claim chart alleging infringement by the accused products. This pre-suit notice forms the primary basis for the complaint's willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2020-01-04 | Earliest Priority Date for ’889 Patent |
| 2024-10-08 | ’889 Patent Issue Date |
| 2024-11-21 | Plaintiff allegedly sent pre-suit notice letter to Defendant |
| 2025-04-09 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 12,108,889 - “Magnetic Framing System”
The Invention Explained
- Problem Addressed: The patent’s background section describes the drawbacks of traditional picture frames, which typically require nails or screws that damage walls. It notes that achieving precise alignment for gallery-style wall displays is difficult and often results in multiple unwanted holes, a particular concern for renters or in office environments with restrictions on wall damage (’889 Patent, col. 1:25-51).
- The Patented Solution: The invention is a two-part framing system designed for easy, damage-free, and repositionable wall mounting. The first part is a wall mount (Part A) that attaches to a surface using a repositionable adhesive and contains a magnetic element. The second part is the frame itself (Part B), which has a complementary magnetic element on its rear face. This magnetic coupling allows the frame to be securely attached to the wall mount and easily adjusted by sliding it, without detaching it from the wall (’889 Patent, Abstract; col. 3:15-28). The wall mount specifically comprises a layer of foam bonded to a magnetically receptive rubber layer, which provides a cushioned interface with the wall (’889 Patent, col. 2:36-54).
- Technical Importance: This approach provides a method for creating precisely aligned "gridded picture walls" without tools or damage, addressing a growing trend in home and office decor (’889 Patent, col. 3:28-33).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 17-19 (Compl. ¶34, ¶57).
- The essential elements of independent claim 1 include:
- A repositionable wall mount configured to be secured to a support surface, the wall mount including a first magnetic element.
- A frame with a rear face including a second magnetic element that is magnetically attracted to the first magnetic element.
- The frame having a border section and an internal center section, where the second magnetic element is located within the center section and is offset from the border section, defining a surrounding border area.
- The repositionable wall mount including a layer of foam.
- A repositionable adhesive coated over the foam layer for contacting the support surface.
- A magnetically receptive rubber layer permanently bonded to the layer of foam.
- The complaint does not explicitly reserve the right to assert additional claims.
III. The Accused Instrumentality
Product Identification
The accused products are Defendants’ repositionable magnetic frame systems, marketed under names including “Mixtiles,” “Stickable Photo Tiles,” “Restickable Photo Tiles,” and “Magnetic Hanging System” (Compl. ¶33).
Functionality and Market Context
- The accused products are described as photo tiles that allow users to “turn your personal photos into stunning wall art that you can hang anywhere—without using nails” (Compl. p. 8). The system is promoted as a “Nail-Free Design” that allows users to “Simply peel and stick to your wall” and “Restick and adjust as needed” (Compl. p. 8). The complaint alleges these products function using a two-part system involving a repositionable wall mount and a separate frame that attaches to it magnetically, as shown in an instructional video (Compl. ¶35, ¶37, ¶40).
- The complaint positions the accused products as direct competitors to Plaintiff’s own products in the repositionable frame system market (Compl. ¶31). Promotional imagery shows the products being applied to a wall by hand, emphasizing their ease of use. The complaint includes a screenshot from Defendants' website showing a person applying the frame portion of the product to a wall mount that is already in place (Compl. p. 9).
IV. Analysis of Infringement Allegations
’889 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a repositionable wall mount configured for being repositionably secured to a support surface, the repositionable wall mount including a first magnetic element | The accused products include a "black square apparatus" that serves as a wall mount and is shown in an instructional video to be repositionable and include a magnetic element. | ¶37-39 | col. 2:36-41 |
| a frame having a rear face that includes a second magnetic element that is magnetically attracted to the first magnetic element resulting in a magnetic coupling between the frame and the repositionable wall mount | The accused products include a frame with a rear face that is shown in video evidence to be magnetically attracted to the wall mount, creating a magnetic coupling. | ¶40-42 | col. 3:6-14 |
| wherein the frame has a border frame section that defines an outer periphery of the frame, the rear face of the frame including a center section disposed internal to the border frame section which protrudes outwardly from the center section... | The accused product's frame has a rectangular border and an internal center section on its rear face, with the border section allegedly protruding outwardly from the center section. | ¶43-45 | col. 7:28-33 |
| the second magnetic element being located within the center section and being offset and spaced from the border frame section so as to define a border area that surrounds the second magnetic element... | The center section on the rear of the accused frame, alleged to be the second magnetic element, is shown in video evidence to be offset from the surrounding border frame section. | ¶46 | col. 7:33-39 |
| wherein the repositionable wall mount includes a layer of foam; a repositionable adhesive coated over the layer of foam...; and a magnetically receptive rubber layer that is permanently bonded to the layer of foam. | A cross-section image of the accused wall mount allegedly shows it includes a repositionable adhesive, a layer of foam, and a magnetically receptive rubber layer bonded to the foam. | ¶47 | col. 7:39-44 |
Identified Points of Contention
- Scope Questions: Claim 1 recites a "center section... which protrudes outwardly from the center section." This language is potentially ambiguous. A central dispute may arise over whether this is a scrivener's error that should be interpreted to mean the border protrudes from the center (as the complaint appears to argue at ¶45), or if the language renders the claim indefinite or requires a structure not present in the accused product.
- Technical Questions: The complaint alleges the presence of a "layer of foam" and a "magnetically receptive rubber layer" based on a single cross-sectional image included as an exhibit (Compl. ¶47). A key factual question will be whether the materials used in the accused product meet the technical definitions of "foam" and "rubber" as understood in the patent, and what evidence beyond this visual representation the plaintiff can provide to substantiate the material composition.
V. Key Claim Terms for Construction
The Term: "a magnetically receptive rubber layer"
- Context and Importance: This term defines a key material component of the wall-mounted portion of the invention. The infringement analysis will depend on whether the material used in the accused product—alleged to be shown in a cross-section image (Compl. ¶47)—falls within the scope of this term. Practitioners may focus on this term because material composition is a common point of dispute where infringement turns on specific technical characteristics rather than just overall function.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes this layer as being made by "mixing ferrous powder into the rubber during the manufacturing process" (’889 Patent, col. 4:52-54). This could support an interpretation covering a range of flexible, rubber-like polymers into which ferrous material has been embedded.
- Evidence for a Narrower Interpretation: The patent repeatedly uses the term "rubber" in conjunction with "foam rubber material" (’889 Patent, col. 2:46) and distinguishes between "magnetic rubber" and "magnetic receptive rubber" (col. 4:52-65), suggesting that "rubber" may refer to a specific class of elastomeric materials known in the art, potentially excluding other types of flexible polymers like thermoplastics.
The Term: "a center section... which protrudes outwardly from the center section"
- Context and Importance: This phrase describes the geometry of the frame’s rear face. Its interpretation is critical because the physical structure of the accused frame must match this claimed limitation. The unusual, seemingly circular phrasing makes its construction a likely focus of the case.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue this is a typographical error and that the intended meaning, supported by the specification's discussion of offsets, is that the border frame section protrudes outwardly relative to the center section (’889 Patent, col. 4:46-51). The complaint's own analysis appears to adopt this interpretation (Compl. ¶45).
- Evidence for a Narrower Interpretation: A defendant could argue that the claim should be read as written, however illogical, or that this ambiguity renders the claim indefinite under 35 U.S.C. § 112. Such an argument would seek to invalidate the claim or narrow its scope to a literal (and perhaps nonsensical) reading that the accused product does not meet.
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement of infringement against Mixtiles, Ltd., asserting that it knowingly encourages infringement by providing its U.S. subsidiary and end-users with the accused products and instructions on how to perform the claimed steps of installing and using them (Compl. ¶49, ¶52). Knowledge is alleged based on a pre-suit notice letter dated November 21, 2024 (Compl. ¶53).
Willful Infringement
Willfulness is alleged based on Defendants' continued infringing conduct after receiving the November 21, 2024 notice letter, which allegedly identified the ’889 Patent and provided an infringement analysis (Compl. ¶54, ¶61).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and definiteness: can the ambiguous claim phrase "a center section... which protrudes outwardly from the center section" be construed in a way that is both legally definite and broad enough to read on the geometry of the accused product's frame, or does the language render the claim invalid or non-infringed?
- A key evidentiary question will be one of material proof: what factual evidence, beyond the single cross-sectional photograph provided in the complaint, will Plaintiff offer to prove that the accused wall mount is made of a "layer of foam" and a "magnetically receptive rubber layer" as required by the claims?
- The willfulness claim will likely turn on a question of objective recklessness: assuming infringement is found, did the Defendants possess a reasonable, good-faith belief that the ’889 Patent was invalid or not infringed after being put on notice, or was their continued conduct after November 21, 2024, objectively reckless?