Instructure v. Canvas Technologies
| Instructure |
| Canvas Technologies |
| 2:2021cv00454 |
| July 27, 2021 |
| US District Court for the District of Utah |
| Dale A Kimball |
| Cecilia M Romero |
| Trademark |
| 15 U.S.C. § 1051 |
| Plaintiff |
Docket Report
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This docket was last retrieved on February 10, 2022. A more recent docket listing may be available from PACER.
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Filing 49
MOTION Re Request for Judicial Notice In Support of Plaintiff's Rule 12(b)(6) Motion to Dismiss Defendant's Counterclaims re #48 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM and Memorandum in Support and Memorandum in Support filed by Plaintiff Instructure. (Attachments: #1 Exhibit A: Instructure's '698 Federal Registration for CANVAS, #2 Exhibit B: Instructure's '435 Federal Registration for CANVAS, #3 Exhibit C: Colby Smith's '811 Federal Registration for CANVAS [CONCIERGE ALLIANCE NAPA VALLEY & SONOMA], #4 Exhibit D: July 13, 2021 Trademark Assignment Agreement Between Colby Smith and Defendant, #5 Exhibit E: Printout from jobs.conciergealliance.com, #6 Exhibit F: Printout of January 13, 2014 Internet Archive Capture of jobs.conciergealliance.com) Motions referred to Cecilia M. Romero.(Kapaloski, Tamara)
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Filing 48
MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM and Memorandum in Support filed by Plaintiff Instructure. (Attachments: #1 Text of Proposed Order)(Kapaloski, Tamara)
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Filing 47
RESPONSE to Motion re #13 MOTION for Preliminary Injunction and Memorandum in Support of Evidentiary Objections to the Supplemental Declaration of Steve Daly in Support of Instructure's Reply to Preliminary Injunction Motion filed by Defendant Canvas Technologies. (Brennan, Sterling)
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Filing 46
ORDER granting Defendant's #44 Motion for Leave to File a Sur-Reply. Signed by Judge Dale A. Kimball on 9/21/2021. (eat)
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Filing 45
NOTICE of Preliminary Injunction Hearing by Canvas Technologies re #15 Order (Veverka, Charles)
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Filing 44
MOTION for Leave to File Sur-Reply in Opposition to Instructure, Inc.'s Motion for Preliminary Injunction filed by Defendant Canvas Technologies. (Attachments: #1 Text of Proposed Order) Motions referred to Cecilia M. Romero. Attorney Charles J. Veverka added to party Canvas Technologies(pty:dft)(Veverka, Charles)
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Filing 43
NOTICE of Preliminary Injunction Hearing Format by Instructure re #15 Order (Kapaloski, Tamara)
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Filing 42
ORDER granting Plaintiff's #40 Motion for Leave to File Under Seal. Signed by Judge Dale A. Kimball on 9/20/2021. (eat)
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Filing 41
**SEALED DOCUMENT** re #40 MOTION to Seal re #39 Affidavit/Declaration in Support of Motion, filed by Plaintiff InstructureNOTE: Filer is instructed to serve the sealed document on all other parties.. (Kapaloski, Tamara)
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Filing 40
MOTION to Seal re #39 Affidavit/Declaration in Support of Motion, filed by Plaintiff Instructure. (Attachments: #1 Text of Proposed Order) Motions referred to Cecilia M. Romero.(Kapaloski, Tamara)
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Filing 39
Redacted AFFIDAVIT/DECLARATION of Steve Daly in Support re #13 MOTION for Preliminary Injunction and Memorandum in Support filed by Plaintiff Instructure. (Attachments: #1 Exhibit A, #2 Exhibit B, #3 Exhibit C, #4 Exhibit D, #5 Exhibit E, #6 Exhibit F, #7 Exhibit G, #8 Exhibit H)(Kapaloski, Tamara)
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Filing 38
REPLY to Response to Motion re #13 MOTION for Preliminary Injunction and Memorandum in Support filed by Plaintiff Instructure. (Kapaloski, Tamara)
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Filing 37
SCHEDULING ORDER: Amended Pleadings due by 10/20/2021. Joinder of Parties due by 10/20/2021. Expert Discovery due by 12/8/2022. Dispositive Motions due by 1/9/2023. 5-Day Jury Trial is set for 8/7/2023 at 08:30 AM in Rm 3.400 before Judge Dale A. Kimball. Signed by Magistrate Judge Cecilia M. Romero on 9/10/2021. (eat)
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Filing 36
REPORT OF ATTORNEY PLANNING MEETING. (Attachments: #1 Text of Proposed Order)(Kapaloski, Tamara)
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Filing 35
NOTICE OF ZOOM HEARING ON MOTIONS re Plaintiff's #13 MOTION for Preliminary Injunction, and Defendant's #31 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM (Notice generated by DAK Chambers): Motion Hearing is set for 10/28/2021 at 02:00 PM before Judge Dale A. Kimball. The hearing will be conducted via Zoom. The parties should not appear in person at the courthouse. The Zoom participation information is as follows:Join ZoomGov Meeting:https://www.zoomgov.com/j/16133447407?pwd=RWtlVFM2c2tmWXZKYUp5NVhTbkZ5UT09Meeting ID: 161 3344 7407Password: 584299One tap mobile +16692545252,,16133447407#,,,,*584299# US (San Jose) +16692161590,,16133447407#,,,,*584299# US (San Jose)Dial by your location +1 669 254 5252 US (San Jose) +1 646 828 7666 US (New York)Meeting ID: 161 3344 7407Password: 584299Find your local number: https://www.zoomgov.com/u/acx9bO8sSS (eat)
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Filing 34
ORDER EXTENDING DEADLINES - granting #33 Motion for Extension of Time to File Response/Reply. Instructure's Reply in Support of Motion for Preliminary Injunction #26 is withdrawn, and the deadlines for the filing of the parties' responses to the specified matters are extended as listed in the Order. Signed by Magistrate Judge Cecilia M. Romero on 9/3/21. (jrj)
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Filing 33
MOTION for Extension of Time to File Response/Reply filed by Counter Claimant Canvas Technologies, Defendant Canvas Technologies. (Attachments: #1 Text of Proposed Order) Motions referred to Cecilia M. Romero.(Brennan, Sterling)
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Filing 32
ANSWER to Complaint with Jury Demand , COUNTERCLAIM against Instructure filed by Canvas Technologies.(Brennan, Sterling)
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Filing 31
MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM and Memorandum in Support filed by Defendant Canvas Technologies. (Attachments: #1 Text of Proposed Order)(Brennan, Sterling)
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Filing 30
AFFIDAVIT/DECLARATION of Stephanie P. Calnan in Opposition re #13 MOTION for Preliminary Injunction and Memorandum in Support filed by Defendant Canvas Technologies. (Attachments: #1 Exhibit 1: USPTO notice of recordation of assignment from Colby Smith to Canvas Technologies Inc for 2 canvas marks, #2 Exhibit 2: 2010.09.11 - Internet Archive Capture of instructure.com, #3 Exhibit 3: 2011.06.26 Internet Archive Capture of instructure.com, #4 Exhibit 4: 2013.10.18 Internet Archive Capture of instructure.com, #5 Exhibit 5: 2017.07.08 Internet Archive Capture of canvaslms.comlead_source_description=instructure.com, #6 Exhibit 6: 2019.10.19 - Internet Archive of portfolium.com, #7 Exhibit 7: Jobvite_s Canvas on TESS - U.S. Registration No. 5272503)(Brennan, Sterling)
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Filing 29
AFFIDAVIT/DECLARATION of Colby Smith in Opposition re #13 MOTION for Preliminary Injunction and Memorandum in Support filed by Defendant Canvas Technologies. (Attachments: #1 Exhibit 1: TESS Printout (USPTO # 86,263,311), #2 Exhibit 2: Section 7 Amendment, #3 Exhibit 3: TESS Printout (USPTO # 90,808,387), #4 Exhibit 4: SMIC2-002 Serial Number 90808387, #5 Exhibit 5: Trademark Acquisition Agreement, #6 Exhibit 6: Trademark Assignment Agreement, #7 Exhibit 7: Trademark License Agreement)(Brennan, Sterling)
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Filing 28
AFFIDAVIT/DECLARATION of Ben Herman in Opposition re #13 MOTION for Preliminary Injunction and Memorandum in Support filed by Defendant Canvas Technologies. (Attachments: #1 Exhibit 1: Instructure Cease and Desist Letter)(Brennan, Sterling)
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Filing 27
MEMORANDUM in Opposition re #13 MOTION for Preliminary Injunction and Memorandum in Support filed by Defendant Canvas Technologies. (Brennan, Sterling)
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Filing 26
REPLY to Response to Motion re #13 MOTION for Preliminary Injunction and Memorandum in Support filed by Plaintiff Instructure. (Kapaloski, Tamara)
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Filing 25
ORDER granting #21 Motion for Admission Pro Hac Vice of Attorney Vincent Badolato for Canvas Technologies.Attorneys admitted Pro Hac Vice must register to efile and receive electronic notification of case activity in the District of Utah at #https://www.pacer.uscourts.gov/cmecf/dcbk.html. Instructions are available at #https://www.utd.uscourts.gov/cmecf-electronic-case-filing.Attorneys admitted Pro Hac Vice may download a copy of the District of Utah's local rules from the court's web site at #https://www.utd.uscourts.gov/rules-practice. Signed by Judge Dale A. Kimball on 8/19/2021. (eat)
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Filing 24
ORDER granting #20 Motion for Admission Pro Hac Vice of Attorney Stephanie Calnan for Canvas Technologies.Attorneys admitted Pro Hac Vice must register to efile and receive electronic notification of case activity in the District of Utah at #https://www.pacer.uscourts.gov/cmecf/dcbk.html. Instructions are available at #https://www.utd.uscourts.gov/cmecf-electronic-case-filing.Attorneys admitted Pro Hac Vice may download a copy of the District of Utah's local rules from the court's web site at #https://www.utd.uscourts.gov/rules-practice. Signed by Judge Dale A. Kimball on 8/19/2021. (eat)
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Filing 23
ORDER granting #19 Motion for Admission Pro Hac Vice of Attorney Peter Willsey for Canvas Technologies.Attorneys admitted Pro Hac Vice must register to efile and receive electronic notification of case activity in the District of Utah at #https://www.pacer.uscourts.gov/cmecf/dcbk.html. Instructions are available at #https://www.utd.uscourts.gov/cmecf-electronic-case-filing.Attorneys admitted Pro Hac Vice may download a copy of the District of Utah's local rules from the court's web site at #https://www.utd.uscourts.gov/rules-practice. Signed by Judge Dale A. Kimball on 8/19/2021. (eat)
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Filing 22
ORDER granting #18 Motion for Admission Pro Hac Vice of Attorney Jason Sobel for Canvas Technologies.Attorneys admitted Pro Hac Vice must register to efile and receive electronic notification of case activity in the District of Utah at #https://www.pacer.uscourts.gov/cmecf/dcbk.html. Instructions are available at #https://www.utd.uscourts.gov/cmecf-electronic-case-filing.Attorneys admitted Pro Hac Vice may download a copy of the District of Utah's local rules from the court's web site at #https://www.utd.uscourts.gov/rules-practice. Signed by Judge Dale A. Kimball on 8/19/2021. (eat)
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Filing 21
MOTION for Admission Pro Hac Vice of Vincent Badolato , Registration fee $ 250, receipt number AUTDC-4087514,Attorneys awaiting Pro Hac Vice admission should immediately register to efile and receive electronic notification of case activity in the District of Utah at #https://www.pacer.uscourts.gov/cmecf/dcbk.html.Registration requests will not be approved until the court has granted the pro hac vice motion. Instructions are available on the court's website at #https://www.utd.uscourts.gov/cmecf-electronic-case-filing. filed by Defendant Canvas Technologies. (Attachments: #1 Application for Pro Hac Vice Admission, #2 Text of Proposed Order)(Brennan, Sterling)
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Filing 20
MOTION for Admission Pro Hac Vice of Stephanie Calnan , Registration fee $ 250, receipt number AUTDC-4087507,Attorneys awaiting Pro Hac Vice admission should immediately register to efile and receive electronic notification of case activity in the District of Utah at #https://www.pacer.uscourts.gov/cmecf/dcbk.html.Registration requests will not be approved until the court has granted the pro hac vice motion. Instructions are available on the court's website at #https://www.utd.uscourts.gov/cmecf-electronic-case-filing. filed by Defendant Canvas Technologies. (Attachments: #1 Application for Pro Hac Vice Admission, #2 Text of Proposed Order)(Brennan, Sterling)
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Filing 19
MOTION for Admission Pro Hac Vice of Peter Willsey , Registration fee $ 250, receipt number AUTDC-4087492,Attorneys awaiting Pro Hac Vice admission should immediately register to efile and receive electronic notification of case activity in the District of Utah at #https://www.pacer.uscourts.gov/cmecf/dcbk.html.Registration requests will not be approved until the court has granted the pro hac vice motion. Instructions are available on the court's website at #https://www.utd.uscourts.gov/cmecf-electronic-case-filing. filed by Defendant Canvas Technologies. (Attachments: #1 Application for Pro Hac Vice Admission, #2 Text of Proposed Order)(Brennan, Sterling)
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Filing 18
MOTION for Admission Pro Hac Vice of Jason Sobel , Registration fee $ 250, receipt number AUTDC-4087486,Attorneys awaiting Pro Hac Vice admission should immediately register to efile and receive electronic notification of case activity in the District of Utah at #https://www.pacer.uscourts.gov/cmecf/dcbk.html.Registration requests will not be approved until the court has granted the pro hac vice motion. Instructions are available on the court's website at #https://www.utd.uscourts.gov/cmecf-electronic-case-filing. filed by Defendant Canvas Technologies. (Attachments: #1 Application for Pro Hac Vice Admission, #2 Text of Proposed Order)(Brennan, Sterling)
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Filing 17
ORDER granting #12 Stipulated Motion for Extension of Time to Respond to #2 Complaint. Answer deadline updated for Canvas Technologies: answer or other response due by 9/7/2021. Signed by Magistrate Judge Cecilia M. Romero on 8/18/2021. (eat)
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Filing 16
CERTIFICATE OF SERVICE by Instructure re #14 Affidavit/Declaration in Support of Motion,,,,,,,,,,,,, #13 MOTION for Preliminary Injunction and Memorandum in Support , #15 Order (Miller, Mark)
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Filing 15
ORDER RE: PROCEDURES FOR EMERGENCY MOTION re #13 MOTION for Preliminary Injunction filed by Instructure. Signed by Judge Dale A. Kimball on 8/18/2021. (eat)
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Filing 14
AFFIDAVIT/DECLARATION of Steve Daly in Support re #13 MOTION for Preliminary Injunction and Memorandum in Support filed by Plaintiff Instructure. (Attachments: #1 Exhibit 1: Reg. No. 4,080,698 issued on Jan. 3, 2012 for Instructures CANVAS Mark, #2 Exhibit 2: Reg. No. 5,191,435 issued on April 25, 2017 for Instructures CANVAS Mark, #3 Exhibit 3: June 2010 Article Introducing Instructures Canvas Platform, #4 Exhibit 4: July 2012 Article Reporting on University of Central Florida Moving to Instructures Canvas Platform, #5 Exhibit 5: Sept. 2012 Article Reporting on University of South Florida Moving to Instructures Canvas Platform, #6 Exhibit 6: Dec. 2012 Article Reporting on San Jose University Moving to Instructures Canvas Platform Canvas, #7 Exhibit 7: Feb. 2019 Press Release on Instructures Acquisition of Student Success Network Portfolium, #8 Exhibit 8: Nov. 2020 Case Study on Palo Alto College Moving to Canvas Portfolium, #9 Exhibit 9: 2020 Infosheet on Instructures Canvas Portfolium, #10 Exhibit 10: Sept. 2013 Manual on Canvas by Instructure, #11 Exhibit 11: 2019 Canvas Brochure, #12 Exhibit 12: Oct. 2017 Press Release Announcing Canvas Awards from THE Journals Readers Choice Awards, #13 Exhibit 13: Oct. 2017 Press Release Announcing Canvas Awards in Campus Technology Readers Choice Awards, #14 Exhibit 14: Feb. 2011 Article Reporting that Instructures Canvas has 26 Educational Institutions as Customers, #15 Exhibit 15: Oct. 2012 Article Reporting that Instructures Canvas has 4.5 Million Users, #16 Exhibit 16: Jul. 2018 Article Reporting that Canvas has Unseated Blackboard as Leading LMS in the U.S., #17 Exhibit 17: Sept. 2020 Article Reporting that 13 U.S. States Sign Deal with Instructure Canvas, #18 Exhibit 18: Dec. 2019 Article Reporting that Jumpstart Moves University Recruiting Off Campus, #19 Exhibit 19: May 2021 Blog Post Announcing that Jumpstart has Rebranded as Canvas, #20 Exhibit 20: May 2021 Article Reporting that Jumpstart Acquired Canvas.com in Lease to Own Deal, #21 Exhibit 21: Transcript of June 2021 Rec Tech Media Podcast with Canvas Tech CEO, Ben Herman, #22 Exhibit 22: Transcript of June 2021 Chad & Cheese Podcast with Canvas Tech CEO, Ben Herman, #23 Exhibit 23: Transcript of June 2021 Recruiting Daily Podcast with Canvas Tech VP of Marketing, Maya Grossman, #24 Exhibit 24: May 2021 Canvas Tech Blog Titled The Journey from Jumpstart to Canvas, #25 Exhibit 25: Consumer Comments Regarding Jumpstarts Rebrand to Canvas, #26 Exhibit 26: Consumer Comments Regarding Jumpstarts Rebrand to Canvas, #27 Exhibit 27: Consumer email to Instructure Regarding Jumpstarts Rebrand to Canvas, #28 Exhibit 28: NCTC Manual on Creating Your NCTC ePortfolio Using Canvas, #29 Exhibit 29: June 2, 2021, Cease & Desist Letter to Canvas Technologies Regarding Instructures Canvas Mark, #30 Exhibit 30: July 13, 2021, Trademark Assignment Agreement between Colby Smith and Canvas Technologies, #31 Exhibit 31: Reg. No. 4,737,811 issued on May 19, 2015 for Colby Smiths CANVAS Acronym Mark with Colors, #32 Exhibit 32: Trademark Application for the CANVAS Mark filed by Colby Smith on July 2, 2021, #33 Exhibit 33: Printout from the Concierge Alliance of Napa Valley and Sonoma Website)(Kapaloski, Tamara)
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Filing 13
MOTION for Preliminary Injunction and Memorandum in Support filed by Plaintiff Instructure. (Attachments: #1 Text of Proposed Order)(Kapaloski, Tamara)
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Filing 12
Stipulated MOTION for Extension of Time To Respond to Complaint filed by Defendant Canvas Technologies. (Attachments: #1 Text of Proposed Order) Motions referred to Cecilia M. Romero. Attorney Sterling Arthur Brennan added to party Canvas Technologies(pty:dft)(Brennan, Sterling) Modified by changing event type to motion for extension of time to file answer on 8/17/2021 (eat).
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Filing 11
**RESTRICTED DOCUMENT** SUMMONS Returned Executed by Instructure as to Instructure Canvas Technologies served on 7/29/2021, answer due 8/19/2021. (Attachments: #1 Exhibit Summons)(Miller, Mark) Modified by correcting docket text, deleting incorrect answer date for Plaintiff and adding an answer date for Defendant on 8/3/2021 (eat).
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ANSWER DEADLINE UPDATED for Defendant Canvas Technologies: Answer due 8/19/2021 pursuant to the date of service on the #11 Summons Returned Executed. (eat)
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Filing 10
ORDER TO PROPOSE SCHEDULE - Plaintiff must propose a schedule to defendant in the form of a draft Attorney Planning Meeting Report within the earlier of fourteen(14) days after any defendant has appeared or twenty-eight (28) days after any defendant has been served with the complaint. See order for additional instructions. Signed by Magistrate Judge Cecilia M. Romero on 7/29/21. (jrj)
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Filing 9
ORDER REFERRING CASE to Magistrate Judge Cecilia M. Romero under 28:636 (b)(1)(A), Magistrate to hear and determine all nondispositive pretrial matters. No attached document. Signed by Judge Dale A. Kimball on 7/28/2021. (eat)
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Filing 8
ORDER granting #7 Motion for Admission Pro Hac Vice of Attorney J. Michael Keyes for Instructure.Attorneys admitted Pro Hac Vice must register to efile and receive electronic notification of case activity in the District of Utah at #https://www.pacer.uscourts.gov/cmecf/dcbk.html. Instructions are available at #https://www.utd.uscourts.gov/cmecf-electronic-case-filing.Attorneys admitted Pro Hac Vice may download a copy of the District of Utah's local rules from the court's web site at #https://www.utd.uscourts.gov/rules-practice. Signed by Judge Dale A. Kimball on 7/28/2021. (eat)
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Filing 7
MOTION for Admission Pro Hac Vice of J. Michael Keyes , Registration fee $ 250, receipt number AUTDC-4067841,Attorneys awaiting Pro Hac Vice admission should immediately register to efile and receive electronic notification of case activity in the District of Utah at #https://www.pacer.uscourts.gov/cmecf/dcbk.html.Registration requests will not be approved until the court has granted the pro hac vice motion. Instructions are available on the court's website at #https://www.utd.uscourts.gov/cmecf-electronic-case-filing. filed by Plaintiff Instructure. (Attachments: #1 Exhibit Application, #2 Text of Proposed Order Granting Motion for Admission Pro Hac Vice)(Miller, Mark)
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Filing 6
**RESTRICTED DOCUMENT**Summons Issued Electronically as to Canvas Technologies. Instructions to Counsel:1. Click on the document number.2. If you are prompted for an ECF login, enter your 'Attorney' login to CM/ECF.3. Print the issued summons for service. (nmt)
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Filing 5
Report on the Filing of an action sent to the Director of the U.S. Patent and Trademark Office. (mh)
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Filing 4
NOTICE OF REQUIREMENTS for appearance phv mailed to attorney Mike Keyes, for Plaintiff Instructure. (mh)
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Filing 3
CORPORATE DISCLOSURE STATEMENT under FRCP 7.1 filed by Plaintiff Instructure identifying Instructure Holdings, Inc. as Corporate Parent. (Miller, Mark)
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Filing 2
COMPLAINT against Canvas Technologies (Filing fee $ 402, receipt number AUTDC-4066952) filed by Instructure. (Attachments: #1 Exhibit A, #2 Exhibit B, #3 Exhibit C, #4 Exhibit D, #5 Civil Cover Sheet Civil Cover Sheet) Assigned to Judge Dale A. Kimball (Miller, Mark)
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Filing 1
Case has been indexed and assigned to Judge Dale A. Kimball. Plaintiff Instructure is directed to E-File the Complaint and cover sheet (found under Complaints and Other Initiating Documents) and pay the filing fee of $ 402 by the end of the business day.NOTE: The court will not have jurisdiction until the opening document is electronically filed and the filing fee paid in the CM/ECF system. Civil Summons may be issued electronically. Prepare the summons using the courts #PDF version and email it to utdecf_clerk@utd.uscourts.gov for issuance. (mh)
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